Ninth Circuit Report

• Citation: Vol. 39 No. 1
• Publication year: 2014
• Author: Anne-Marie Dao

Ninth Circuit Report

Anne-Marie Dao

Miclean Gleason LLP

This issue's Ninth Circuit Report discusses two very interesting cases. In December in Herb Reed Enterprises v. Florida Entertainment Management,¹ the Ninth Circuit reversed decades of precedent in holding that the trademark owner is required to establish irreparable harm to obtain a preliminary injunction (rejecting the presumption of irreparable harm). The next case involves the right to publicity and addresses the question of whether using likeness to football players in video games is protected by the First Amendment. The Court in In re NCAA Student-Athlete Name & Likeness Licensing Litigation held that a video game manufacturer had violated the college football player plaintiff's right to publicity.²

HERB REED ENTERPRISES, LLC V. FLORIDA ENTERTAINMENT MANAGEMENT

Background

Following a slew of cases that threw into question whether the presumption of irreparable harm upon a trademark owner's showing of likelihood of success on the merits, the Ninth Circuit offered clarity in holding that trademark owners seeking a preliminary injunction must establish irreparable harm.³

In order to obtain a preliminary injunction, a trademark owner must establish that they are likely to succeed on the merits, that they are likely to suffer irreparable harm without the preliminary relief, that the balance of equities tips in their favor, and finally, that the preliminary injunction is in the public interest.⁴ In the past, the rule had been that "irreparable injury may be presumed from a showing of likelihood of success on the merits of a trademark infringement claim."⁵

Recent Holdings

However, several recent Supreme Court holdings had "cast double on the validity of [the Ninth Circuit's] previous rule that the likelihood of 'irreparable injury may be presumed from a showing of likelihood of success on the merits of a trademark infringement claim.'"⁶ These decisions include the eBay decision in which the Court held that in the patent context, plaintiffs must establish irreparable injury in seeking a permanent injunction.⁷

Further, the Supreme Court's held in Winter⁸ that the possibility of irreparable harm is not enough and that a demonstration that irreparable harm is likely is necessary.⁹ Indeed, the Supreme Court stated that "the Ninth Circuit's 'possibility' standard is too lenient. Our frequently reiterated standard requires plaintiffs seeking preliminary relief to demonstrate that irreparable injury is likely in the absence of an injunction."¹⁰ The Court went further and explained that [i]ssuing a preliminary injunction based only on a possibility of irreparable harm is inconsistent with our characterization of injunctive relief as an extraordinary remedy that may only be awarded upon a clear showing that the plaintiff is entitled to such relief." ¹¹

District Court

Herb Reed involves Florida Entertainment Management, Inc., a company that organizes and promotes live musical performances ("Florida Entertainment Management"). Florida Entertainment Management owns The Platters, a performing group.¹² Herbert Reed founded a performing group in 1953 called The Platters.¹³ The Platters had hit songs such as "Only You," and "Smoke Gets in Your Eyes."¹⁴ The band went on to break up in the 1960s.¹⁵ Several lawsuits ensued, each revolving around ownership of "The Platters" trademark.¹⁶ At issue in this case was Plaintiff Herbert Reed's Motion for a Preliminary Injunction.

Preliminary Injunction

The District Court went through the eight Sleekcraft factors to determine likelihood of consumer confusion.¹⁷ After discussing each factor, the District Court held that there is a likelihood of consumer confusion as to both Florida Entertainment Management's group with the original Platters, as well as Florida Entertainment Management's group with Herbert Reed's performing group "Herb Reed and the Platters" and/or "Herb Reed's Platters."¹⁸ The District Court then turned its discussion to the likelihood of irreparable harm.

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The Court first stated that the rule had previously been that there was a presumption of irreparable harm if the moving party showed likelihood of success on the merits but that recent court rulings had "cast doubt on that presumption."¹⁹ The Court then stated that it would not give Herbert Reed the presumption of irreparable harm²⁰ and went on to find that irreparable harm had been established and thus granted Herbert Reed's Motion for Preliminary Injunction.²¹ Florida Entertainment Management appealed the decision.

Ninth Circuit Court of Appeals

Florida Entertainment Management argued that the preliminary injunction was wrongfully issued because there was no likelihood of...