No Presumption of Harm I Presume?

What happens when a band breaks up? Any number of things. The obvious ones are a “Behind the Music” segment on VH1 and tell all biographies by various band members. But another popular choice is trademark litigation.

_x000D_ Why you ask? Well, the band name is a trademark, and when members go their separate ways and each member wants to cash in on the nostalgia, well trouble tends to brew. A recent case from the U.S. Court of Appeals for the Ninth Circuit is a good example. This case involved the 50’s vocal band “The Platters.”

_x000D_ They were big back in the day, scoring hits with “Only You”; “Smoke Gets In Your Eyes”; and “The Great Pretender.” Since the breakup various members have performed under the name. And that resulted in litigation in a federal court in California.

_x000D_ I am not going to delve deeply into the facts. Suffice it to say, HRE, a company claiming ownership over the mark, brought an infringement suit against another entity. Included in the suit was a demand for a temporary restraining order enjoining the use of the “Platters” mark. The trial court made a key ruling – the plaintiff was not entitled to injunctive relief unless it could show evidence establishing the likelihood that the infringement would cause “irreparable harm.” Irreparable harm means that money can’t fix the trouble. Imagine if someone were about to chop down a 200 year old tree straddling your property line. Given that it would take another 200 years to replicate it, the harm from cutting it down would be irreparable. Contrast that with bashing my fender. Money and a good body shop can heal that wound. In that setting there’d be no irreparable harm. The trial court then decided the plaintiff satisfied that burden.

_x000D_ On appeal, though, the Ninth Circuit came to a different result. The appellate court agreed the plaintiff needed to produce evidence establishing a likelihood of irreparable harm. That ruling was significant because the Ninth Circuit had held in previous cases that if the party could establish an infringement, the court could presume the harm was irreparable. But more recently, the U.S. Supreme Court has determined there is no presumption. Which puts a tough burden on the plaintiff.

_x000D_ And as if to illustrate its point, the appellate court found that the trial court based its decision on “platitudes” rather than evidence. It agreed with the trial court that infringement “could” lead to a loss of control over one’s business reputation and damage to goodwill. But “could” doesn’t cut it. A plaintiff has to provide enough evidence to move the needle from “could cause harm” at least to “probably will cause harm.”

_x000D_ As I said, it is tough to establish irreparable harm. And the moral is, take that fact into account before charging into court looking to stop an infringer. Make sure you have the evidence, and if you don’t re-think your strategy. The court is unlikely to listen to someone “pretending” to suffer harm.