Pattishall IP Blog

June 10, 2011

First Circuit: Supreme Court Decision Calls into Question Presumption of Irreparable Harm in Trademark Infringement Preliminary Injunction Cases

Filed under: Litigation, Trademark (General) — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:37 pm

Categories: Trademark (General), Litigation
Tags: Litigation, Preliminary Injunction, 1st Circuit, Janet A. Marvel

by Janet Marvel, Trademark Attorney

In eBay v. MercExchange L.L.C., 547 U.S. 388 (2006), the Supreme Court reaffirmed that courts must apply “traditional rules of equity” in deciding whether to grant permanent injunctions in patent cases.  It found that the Federal Circuit’s “general rule” in patent cases “that a permanent injunction will issue once infringement and validity have been adjudged” except in “exceptional circumstances” was improper.  Essentially, then, the Court found that courts cannot presume irreparable harm in the patent injunction context.

In many jurisdictions, irreparable harm has been presumed in trademark infringement preliminary injunction proceedings.  After eBay v. MercExchange, courts have considered, and sometimes avoided, the question of whether that presumption remains valid.  See Osmose, Inc. v. Viance LLC, 612 F.3d 1298 (11th Cir. 2010) (“Because the district court did not rely on a presumption of irreparable injury, we need not decide whether such a presumption still applies in the wake of eBay); N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211 (11th Cir. 2008) (vacating and remanding preliminary injunction for consideration of whether a presumption of irreparable harm should be applied after the eBay decision); Lorillard Tobacco Co. v. Engida, 213 Fed. Appx. 654 (10th Cir. 2007), cert. denied, 127 S.Ct. 3016 (2007) (“We need not consider how eBay may apply in this context . . . because in any event Lorillard has not shown that any harm Lorillard would suffer in the absence of an injunction outweighed the potential harm to I and G”).  Compare Lorillard Tobacco Co. v. Amouri’s Grand Foods, Inc., 453 F.3d 377 (6th Cir. 2006) (court presumed irreparable harm on a showing of likelihood of success on the merits); Harris Research, Inc. v. Lydon, 505 F. Supp. 2d 1161 (D. Utah 2007) (“The Supreme Court has recently disapproved the use of categorical rules in connection with injunctive relief in intellectual property actions, and Plaintiff must show irreparable injury to support a preliminary injunction.”) (internal quotations and citations omitted).  (more…)

April 28, 2011

Successfully Defend Copyright Infringement Claim – Win Attorneys’ Fees

Filed under: Copyright, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:55 pm

Categories: Litigation, Copyright
Tags: Copyright Infringement, Attorney’s Fees, 1st Circuit, Phillip Barengolts

by Phillip Barengolts, Trademark Attorney

The First Circuit recently confirmed that an alleged copyright infringer who prevails in the copyright infringement action can be entitled to its reasonable attorneys’ fees.  Latin American Music Co. v. American Society of Composers, Authors and Publishers, 98 U.S.P.Q.2d 1409 (1st Cir. 2011).[1]  Without getting into the details of this long-running dispute, this decision concerned Latin American Music Co.’s (“LAMCO”) appeal from an award of attorneys’ fees to the American Society of Composers, Authors and Publishers (“ASCAP”) after ASCAP won a jury verdict of non-infringement of the one song still at issue in the proceeding during trial.

Section 505 of the Copyright Act states, in relevant part, “the court may . . . award a reasonable attorney’s fee to the prevailing party as part of the costs.”  17 U.S.C. § 505.  The First Circuit noted that a “prevailing party” is “one who has prevailed on the merits of at least some claims.”  LAMCO, 98 U.S.P.Q.2d at 1411 (quotations omitted).  “A showing of frivolity or bad faith is not required; rather, the prevailing party need only show that its opponent’s copyright claims . . . were ‘objectively weak.'”  Id. (citations omitted).  Here, the First Circuit refused to disturb the district court’s finding that LAMCO’s claims were weak and its award of fees.  The First Circuit stated that it would do so “only if the record persuades us that the trial court indulges in a serious lapse in judgment.”  Id. (citation omitted). (more…)

August 27, 2010

First Circuit Affirms Trademark Owner’s Ability to Stop Former Franchisee’s “Holdover” Use Despite Disclaimer

Filed under: Licensing — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:44 pm

by Phillip Barengolts

The owner of a trademark generally has unfettered control over the manner in which its mark may be used in connection with goods and services offered in commerce.  Thus, one who does not own a trademark but wants to offer products using the mark must seek a license from the mark’s owner.  After such a license has been terminated, the former licensee has no right to continue using the mark. See, e.g., Burger King Corp. v. Mason, 710 F.2d 1480, 1493 (11th Cir. 1983) (“[M]any courts have held that continued trademark use by one whose trademark license has been cancelled satisfies the likelihood of confusion test and constitutes trademark infringement.”); Church of Scientology Int’l v. Elmira Mission of Church of Scientology, 794 F.2d 38 (2nd Cir. 1986).

This relationship between a trademark owner and its licensee forms the basis of most franchise systems.  Thus, franchisors have long been able to obtain relief against franchisees’ use of trademarks, trade dress, logos, and color schemes after the termination of the franchise, generally referred to as “holdover” use.  The First Circuit recently confirmed this fundamental concept in Shell Co. Ltd.  v. Los Frailes Serv. Station, Inc., 605 F.3d 10 (1st Cir. 2010). (more…)

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