Introduction

Many trademark lawyers practice only trademark law. Although some also dabble in copyright law, many do not also practice patent law. Given the difficulty of just keeping up with new developments in trademark law, most trademark lawyers understandably do not have the luxury of also keeping abreast of the latest decisions in patent cases. However, decisions in trademark cases are sometimes influenced by decisions in other areas of intellectual property law, including patent law. So trademark lawyers beware—what may seem like just another patent case could indeed influence future trademark cases. This article explains how two recent Supreme Court decisions in patent cases—MedImmune and eBay—have had a direct impact on trademark law in terms of declaratory-judgment jurisdiction and permanent injunctions.

MedImmune and Declaratory Judgments in Trademark Litigation

The Supreme Court's 2007 MedImmune decision1 regarding declaratory-judgment jurisdiction has been universally adopted in trademark cases, and by signaling an intent to open the door for more declaratory-judgment actions, it is certainly important to keep in mind when contacting the other side in a potential dispute. Of course, because the case is only two years old, the full impact of MedImmune is not yet known. However, a number of trademark cases have addressed the impact of MedImmune, and a comparison between these cases and pre-MedImmune cases may shed some light on how expansive MedImmune's influence will actually be.

Prior to MedImmune, in both patent and trademark cases, a declaratory-judgment suit met Article III's case-or-controversy requirement when a potential infringer demonstrated a "reasonable apprehension" of being sued based on its course of conduct that brought it into adversarial conflict with a trademark owner.2 Under this test, an "actual controversy" exists where a court finds that the trademark owner either directly or indirectly threatened the potential infringer with infringement litigation.3 Examples of activities in pre-MedImmune cases that gave rise to a "reasonable apprehension" of suit under the Lanham Act include:

  • A direct threat of trademark litigation;4
  • A direct threat of only state trademark claims (i.e., no Lanham Act claims);5
  • An indirect threat of litigation implicit in the language of a cease-and-desist letter;6
  • A request that a potential infringer or its customers not use a trademark owner's mark;7
  • The recordation of a trademark registration with United States Customs to prevent a potential infringer's importation of its goods;8 and
  • The filing of suit against a potential infringer's competitors or customers.9

However, where the potential infringer was merely in the planning stages of a potential infringement, showed no concrete or imminent intention of launching an infringing product or service (sometimes considered the second prong of the "reasonable apprehension" test), or where a trademark owner had voluntarily agreed not to sue despite a potential infringement, courts have held that there is no actual controversy and they thus lack standing to hear the case under the Declaratory Judgment Act. The following are examples of a party's activities that did not create a "reasonable apprehension" of suit:

  • Trademark owner's counsel made only vague and noncommittal claims to the potential infringer;10
  • After asserting infringement, a trademark owner changed positions and stipulated that the use was fair in an amended complaint;11
  • After the trademark owner voluntarily dismissed its infringement claim, no jurisdiction over the alleged infringer's counterclaim of genericness;12
  • Where the parties entered into a settlement agreement in which the alleged infringer agreed to cease-and-desist use of the disputed mark, no jurisdiction over the alleged infringer's subsequent declaratory-judgment action;13
  • Where the potential infringer made no sales and showed no immediate intention or ability to so;14
  • Where the potential infringer ceased its importation and sale of products and exhausted its inventory;15 and
  • Where the potential infringer issued a vague and unspecific need to use a mark generically on its products.16

The Supreme Court in MedImmune, however, specifically rejected the Federal Circuit's "reasonable apprehension" test,17 holding that a plaintiff need only establish, "under all the circumstances," that a controversy be of sufficient "immediacy and reality to warrant the issuance of a declaratory judgment."18 This holding is seen as an expansion of "the possible fact situations in which a declaratory judgment [is] proper."19 The questions for trademark practitioners are threefold: (1) whether the MedImmune holding applies to trademark cases, (2) whether it actually lowers the threshold for trademark declaratory-judgment suits, and (3) whether pre-MedImmune trademark case law is still relevant.

The overwhelming answer to the first question is yes—MedImmune applies to trademark cases. After all, prior to MedImmune, courts had routinely applied declaratory-judgment standards from patent cases to trademark disputes,20 and commentators do not see any reason why this should change.21 Indeed, as of the writing of this article, every court that has considered the issue has applied MedImmune to trademark declaratory-judgment actions. And, in every one of these cases, even though none addressed the fact pattern at issue in MedImmune where a licensee sued a licensor before breaking their contract, these courts specifically found that MedImmune rejected the "reasonable apprehension" test for trademark cases and applied the new "immediacy and reality" test.

Second, does MedImmune matter? The Federal Circuit observed that "[w]hether intended or not, the now more lenient legal standard [of MedImmune] facilitates or enhances the availability of declaratory judgment jurisdiction in patent cases."22 But does the holding really change the standard in trademark cases? After all, the Supreme Court itself admitted that it did not "draw the brightest of lines between those declaratory-judgment actions that satisfy the case-or-controversy requirement and those that do not."23 The Tenth Circuit, in its Surefoot decision, specifically held that the standard had changed after MedImmune and overturned a district court's decision that relied on the "reasonable apprehension" test.24 There, one party sold ski boots and the other sold shoe-traction gear under similar marks. Over the course of several years, the defendant repeatedly accused the plaintiff of infringement and occasionally threatened litigation if the plaintiff failed to change its mark. It filed five proceedings with the Trademark Trial and Appeal Board ("TTAB") opposing the plaintiff's attempts to obtain trademark registrations for the disputed mark. Faced with uncertainty about its right to use the SUREFOOT mark, the plaintiff filed a declaratory-judgment suit against the defendant, asking the district court to determine once and for all whether it was infringing the defendant's rights. The district court, applying the pre-MedImmune "reasonable apprehension" standard, dismissed the case, holding that even though the defendant complained to plaintiff of infringement and made threats of litigation in 1998 and 1999, its real apprehension of suit had dissipated by 2006 when defendant filed suit.25 Further, even the intervening TTAB actions failed to give rise to any reasonable basis to fear imminent litigation.26

Enter MedImmune. On appeal, the Tenth Circuit noted that after the district court's holding, the standard had changed: "[MedImmune] expressly rejected the 'reasonable apprehension of imminent suit' test on the ground that it imposed an additional hurdle inconsistent with the Court's Article III jurisprudence." Further, the court rejected defendant's arguments that MedImmune applied only to patent cases or to parties in a privity relationship.27 Accordingly, the Tenth Circuit held that, after years of direct and indirect threats of infringement by defendant, there existed an actual controversy that was sufficiently "definite and concrete," and reversed the district court.28

The Southern District of New York also specifically found that the threshold is now lower for Lanham Act claims, stating that "[t]he MedImmune standard is necessarily less rigorous than the 'reasonable apprehension of imminent suit' test."29 In Russian Standard, at issue were the plaintiffs' past statements questioning the Russian heritage of the defendants' Stoli Vodka, and the plaintiffs' threats to continue to advertise these claims in the future. Regarding the past statements, the court held that "[d]espite the lower threshold in MedImmune, plaintiffs [were] unable to prove that an actual controversy exist[ed] as to their past statements" because the defendants waived their rights to sue in an affidavit accompanying their motion to dismiss.30 However, regarding the plaintiffs' future statements, the court found the threat of legal action for plaintiffs' future conduct was sufficiently immediate to create an "actual controversy" because the plaintiffs alleged in their complaint that they would continue to make statements questioning Stoli's Russian heritage.31

Similarly, in AARP, the same court cited Russian Standard for the proposition that the declaratory-judgment threshold is now lower as a result of MedImmune,32 but found that the plaintiffs satisfied pre-MedImmune standards anyway because the plaintiffs were actively seeking licensing partners that created a reasonable apprehension of suit.33 The court ultimately avoided ruling, however, on "precisely how much [MedImmune] loosened the case or controversy tests previously applied."34

Other cases merely cite to MedImmune, apply the "immediacy and reality" test, and decide the case on the facts without reference to a lower standard. Only one of these other cases, however, found a sufficient controversy. There, the Middle District of Florida held that, although "the filing of a TTAB action is not, on its own, sufficient to create an actual controversy," because the defendant also "sent correspondence to [the plaintiff] suggesting it would sue if its concerns 'could not be settled on an amicable basis,'" there was a sufficient controversy to assert jurisdiction.35 This was so because the "Supreme Court . . . recently instructed that in situations where the plaintiff's actions to avoid imminent injury are coerced by threatened enforcement action of a private party, lower federal courts 'have long accepted jurisdiction.'"36

In the other cases to address the issue, however, the defendant's activities still did not meet the new lower standard. In Geisha, the Northern District of Illinois found that defendant's indefinite plans to open a new restaurant with a name similar to the plaintiff's restaurant (which plans consisted of designing a logo, developing a menu, and driving around looking for potential locations), its filing of an intent-to-use trademark application with the PTO, and plaintiff's request that it voluntary abandon the application, were insufficiently imminent and thus did not meet the controversy requirement.37 The same court in Publications International found that because the plaintiff failed to allege that the defendant obtained any trademark rights in a term it used briefly at a trade show and subsequently abandoned, the plaintiff had not alleged a "substantial controversy . . . of sufficient immediacy" for the court to assert jurisdiction.38

In Vantage Trailers, the Southern District of Texas held that because the plaintiff "had neither asserted nor proven that it had a substantially fixed and definite trailer design when it filed its declaratory judgment action," its actions were merely preparatory and not sufficient to establish a controversy.39 The Eastern District of Michigan, in World Religious Relief, found that the parties' correspondence was insufficient to create an "actual controversy" of "sufficient immediacy" because the letters did not mention the prospect of litigation at all and the tone was nonthreatening.40 And, in Future Media Architects, the Southern District of New York found that the parties' prior UDRP proceeding involving a domain name containing the mark LH did not create an actual controversy regarding defendant's other mark LUFTHANSA, and thus dismissed all claims regarding the latter mark.41

Thus, despite Surefoot, Russian Standard, and AARP, and the seeming intention of the Supreme Court to lower the bar for declaratory-judgment actions, it is not clear how much MedImmune has actually affected the threshold for bringing declaratory-judgment actions in trademark cases. This is because many of these fact patterns and holdings look similar to those in pre-MedImmune cases, and in fact, courts have applied pre-MedImmune case law in them.42 No court has outright rejected the use of pre-MedImmune case law to determine whether an actual controversy exists.

However, trademark practitioners should still be aware of the potential ramifications of MedImmune. Trademark demand letters have always danced the line between threatening litigation, demanding total cessation and capitulation, and encouraging settlement dialogue for some intermediate resolution, and thus may be more likely to invite a declaratory judgment under the new standard. Demand letters that invite dialogue between the parties, express a willingness to settle the dispute amicably, and refrain from express threats of litigation, arguably continue to offer some protection from the risk of a declaratory-judgment action, even under MedImmune. And, so far, simply filing applications or actions at the PTO or engaging in merely preparatory or exploratory trademark usage appear to continue to be nonjusticiable under the new standard.

eBay and Injunctive Relief in Trademark Cases

In contrast to the universal acceptance of MedImmune, courts in trademark cases have not been quite as eager to adopt another of the Supreme Court's recent patent decisions—the 2006 eBay case. There, the Supreme Court discussed the standards for the grant of a permanent injunction under the Patent Act.43 Historically, under principles of equity, a plaintiff seeking a permanent injunction must demonstrate that (1) the plaintiff has suffered an irreparable injury; (2) the remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) the public interest would not be disserved by a permanent injunction.44

In eBay, because the plaintiff sought a permanent injunction under the Patent Act, which specifically provides that injunctions shall be granted "in accordance with the principles of equity,"45 the Court held that the lower courts (i.e., district court and circuit court) in the case should have specifically weighed all four of these factors before granting or denying an injunction.46 Instead, the Supreme Court found that the district and circuit courts had engaged in categorical presumptions that precluded findings on some of the factors. In the case of the Fourth Circuit, it articulated a "general rule," unique to patent disputes, "that a permanent injunction will issue once infringement and validity have been adjudged."47 The Court, stating that "traditional equitable principles do not permit such broad classifications," held that both courts erred in their categorical denial, in the case of the district court, and categorical grant, in the case of the circuit court, of an injunction without weighing all of the factors. It stated that injunctive "discretion must be exercised consistent with traditional principles of equity, in patent disputes no less than in other cases governed by such standards."48 This reasoning could arguably extend to trademark cases because the Lanham Act, like the Patent Act, also grants courts the "power to grant injunctions, according to the principles of equity."49

The eBay case is thus potentially relevant to trademark owners and lawyers because trademark plaintiffs routinely seek permanent injunctions after prevailing on the merits, whether on summary judgment or after trial. And if eBay were similarly applied, it would create an additional burden in obtaining a permanent injunction. Injunctions, after all, are the standard and often-necessary remedy in trademark cases because the most important objectives in trademark litigation are usually to stop the infringer from harming the plaintiff's goodwill and to stop or prevent public confusion, which cannot be achieved solely with monetary awards.50

Indeed, several courts immediately applied eBay in trademark cases and required plaintiffs to specifically show all of the traditional four factors before granting permanent injunctions.51 Others applied eBay and refused to grant a permanent injunction unless the plaintiff showed irreparable harm beyond mere infringement.52

Not all courts, however, have applied eBay to permanent injunctions in trademark cases. One refused to apply eBay to the grant of a permanent injunction in a trademark-infringement case because the Second Circuit had not yet extended eBay to trademark cases.53 Instead, the court applied the Second Circuit's permanent-injunction standard.54 Another court cited to eBay, but then proceeded to presume that "once the plaintiff establishes a likelihood of confusion, it is ordinarily presumed that the plaintiff will suffer irreparable harm," and granted a permanent injunction without weighing all four factors required by eBay.55

Even less clear, however, is whether eBay applies to the grant of preliminary injunctions in trademark cases. Although eBay was decided in the context of a permanent injunction, neither the Patent Act nor the Trademark Act specifies or limits the types of injunction to be granted in "accordance with equity."56 And, both patent and trademark jurisprudence have a similar presumption to the one at issue in eBay in that courts will presume irreparable harm for purposes of a preliminary injunction upon a finding of a likelihood of success.57 In patent cases, the vast majority of courts have held that eBay did away with that presumption in preliminary-injunction cases.58 The Federal Circuit, however, has yet to specifically rule on the issue.59

Turning to trademark cases, one circuit court and two district courts have stated in dicta that eBay should apply to preliminary injunctions in trademark cases and abolishes the irreparable-harm presumption.60 However, eBay has so far been rejected by courts that have decided cases on the merits by not applying eBay's reasoning to preliminary injunctions in the trademark context. These courts typically limit the reach of eBay to permanent injunctions without further analysis.61 Two other circuit courts, also without reaching a decision on the merits, have been presented with the issue, but declined to opine on whether eBay applied to trademark preliminary injunctions, and decided the cases on other grounds.62 One district court refused to apply eBay to preliminary injunctions because the Ninth Circuit did not apply it in a post-eBay case.63

Consequently, before filing suit, trademark owners and practitioners need to be aware of the potential reach of eBay if an injunction is an important remedy. If a choice of forum is possible, trademark owners may want to seek a forum that does not apply eBay to trademark cases because the test is more onerous than prior injunctive standards. If a choice of forum is not available, trademark owners and practitioners still need to know if the court they are in applies eBay to the type of injunction sought—preliminary or permanent—so that they can appropriately plead their claims for injunctive relief or respond to such claims and submit evidence on the issue of irreparable harm if necessary. In courts that have yet to opine on the applicability of eBay, counsel must be prepared to argue both the prevailing standard in the circuit and the new eBay standard.

Endnotes

1 MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007).

2 See, e.g., Starter Corp. v. Converse, Inc., 84 F.3d 592, 595 (2d Cir. 1996); Windsurfing Int'l, Inc. v. AMF, Inc., 828 F.2d 755 (Fed. Cir. 1987); Crown Drug Co. v. Revlon, Inc., 703 F.2d 240 (7th Cir. 1983); Chesebrough-Pond's, Inc. v. Faberge, Inc., 666 F.2d 393 (9th Cir. 1982).

3 See, e.g., PHC, Inc. v. Pioneer Healthcare, 75 F.3d 75 (1st Cir. 1996) (finding declaratory-judgment jurisdiction as a result of cease-and-desist letter that could reasonably be viewed as resulting in a Lanham Act § 43(a) suit if no settlement was reached); Mfrs. Hanover Corp. v. Me. Sav. Bank, 225 U.S.P.Q. 525 (S.D.N.Y. 1985) (finding that letter from defendant to plaintiff referring to "problems" with likely confusion and mentioning defendant's "aggressive" protection policy and willingness to institute formal legal proceedings, coupled with defendant's opposition to plaintiff's application to register, all combined to create a reasonable apprehension of being sued for infringement sufficient for declaratory-judgment suit).

4 E.g., Jeffrey Banks, Ltd. v. Jos. A. Bank Clothiers, Inc., 619 F. Supp. 998 (D. Md. 1985) (finding that a letter from the trademark owner claiming that the potential infringer's use violated the Lanham Act created a reasonable apprehension of being sued for infringement); Rhoades v. Avon Prods., Inc., 504 F.3d 1151 (9th Cir. 2007) (finding that after threats of infringement litigation after years of unsuccessful settlement negotiations, the plaintiff "had good reason" to "suspect that Avon would make good on its threats and seek hefty damages for any infringement").

5 See PHC, 75 F.3d at 79 ("No competent lawyer advising [the declaratory-judgment plaintiff] could fail to tell it that, based on the threatening letters and the surrounding circumstances, a section 43(a) suit was a likely outcome.").

6 E.g., Simmonds Aerocessories, Ltd. v. Elastic Stop Nut Corp. of Am., 257 F.2d 485, 490 (3d Cir. 1958) ("It is sufficient if such a threat is implicit in the attitude of the defendant as expressed in circumspect language contained in a letter.").

7 See King Kup Candies v. H. B. Reese Candy Co., 134 F. Supp. 463 (M.D. Pa. 1955) (finding letter politely asking potential infringer to stop using its mark "craftily phrased" to lay out infringement claim), opinion adhered to on reargument, 140 F. Supp. 115 (M.D. Pa. 1956).

8 See Simmonds Aerocessories, 257 F.2d at 490 (finding that because the potential infringer "had notice of the defendant's adverse position, it was not necessary that an actual threat of infringement and litigation be shown").

9 See G. Heileman Brewing Co. v. Anheuser-Busch, Inc., 873 F.2d 985, 990 (7th Cir. 1989) (finding a reasonable apprehension of being sued for infringement was created when the trademark owner filed a "flurry of litigation" against competitors who made use of the same mark); Oreck Corp. v. Nat'l Super Serv. Co., 39 U.S.P.Q.2d 1702 (E.D. La. 1996) (finding actual controversy existed between a trademark owner and the plaintiff supplier of a product because of a barrage of suits brought by the owner against the supplier's competitors and one of its distributors, even though the trademark owner states that it has no present interest in suing the plaintiff supplier).

10 See Crown Drug, 703 F.2d at 244 (finding that "reasonable apprehension" must be inspired by defendant's actions or words; innocuous and vague remarks of counsel are not sufficient).

11 See Trippe Mfg. Co. v. Am. Power Conversion Corp., 46 F.3d 624 (7th Cir. 1995) (dismissing declaratory-judgment count).

12 See CIBER, Inc. v. CIBER Consulting, Inc., 326 F. Supp. 2d 886, 892 (N.D. Ill. 2004) ("In the instant case, there is no controversy because plaintiff has issued a statement of non-liability with respect to defendants' current and past use of the CIBER mark and agreed not to sue defendants for any past or current conduct relating to that mark.").

13 See Gator.com Corp. v. L.L. Bean, Inc., 398 F.3d 1125, 1131 (9th Cir. 2005) ("Because the parties' settlement agreement has wholly eviscerated the dispute that prompted Gator to intimate this suit, Gator's request for declaratory relief no longer gives rise to a live case or controversy.").

14 See G. Heileman Brewing, 873 F.2d at 990 (finding that while the declaratory-judgment plaintiff need not have actually engaged in sale of products under the mark, it must have a "definite intent and apparent ability to commence use" of the mark).

15 See Balt. Luggage Co. v. Samsonite Corp., 727 F. Supp. 202, 210 (D. Md. 1989) ("The controversy between Baltimore Luggage and Samsonite is now only a theoretical one.").

16 See Windsurfing Int'l, 828 F.2d at 758 ("[A]bsent a combination of AMF's use of the mark and threats or suits by WSI, the legal interests of AMF and WSI are not adverse."); Polaroid Corp. v. Berkey Photo, Inc., 425 F. Supp. 605, 608 (D. Del. 1976) (finding potential infringer's mere "averment that it 'contemplates using and needs to use the term Polaroid' fall[s] far short of allegations of a substantial dispute between the parties").

17 MedImmune, 549 U.S. at 132 n.11.

18 Id. at 127.

19 6 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 32.51.50 (4th ed. 2008).

20 See, e.g., Windsurfing Int'l, 828 F.2d at 757 ("Because declaratory judgment actions involving trademarks are analogous to those involving patents, . . . we may also, when necessary, find guidance in the precedents of this court."); Starter, 84 F.3d at 596 ("Declaratory judgment actions involving trademarks are analogous to those involving patents, . . . and principles applicable to declaratory judgment actions involving patents are generally applicable with respect to trademarks.").

21 See, e.g., McCarthy, supra § 32.51.50.

22 Micron Tech., Inc. v. Mosaid Techs., Inc., 518 F.3d 897, 902 (Fed. Cir. 2008).

23 MedImmune, 549 U.S. at 127.

24 Surefoot LC v. Sure Foot Corp., 531 F.3d 1236 (10th Cir. 2008).

25 Id. at 1238.

26 Id.

27 Id. at 1243-44.

28 Id. at 1245.

29 Russian Standard Vodka (USA), Inc. v. Allied Domecq Spirits & Wine USA, Inc., 523 F. Supp. 2d 376, 382 (S.D.N.Y. 2007).

30 Id.

31 Id. at 383.

32 AARP v. 200 Kelsey Assocs., LLC, 2009 U.S. Dist. LEXIS 969, at *16-18 (S.D.N.Y. Jan. 6, 2009).

33 Id. at *27-28.

34 Id. at *29.

35 HSI IP, Inc. v. Champion Window Mfg. & Supply Co., 510 F. Supp. 2d 948, 956 (M.D. Fla. 2007) (quoting MedImmune).

36 Id.

37 Geisha, LLC v. Tuccillo, 525 F. Supp. 2d 1002 (N.D. Ill. 2007).

38 Publ'ns Int'l, Ltd. v. Leapfrog Enters., 2008 U.S. Dist. LEXIS 98467, at *8 (N.D. Ill. Dec. 4, 2008).

39 Vantage Trailers, Inc. v. Beall Corp., 2008 U.S. Dist. LEXIS 7133, at *16-17 (S.D. Tex. Jan. 31, 2008).

40 World Religious Relief v. Gospel Music Channel, 563 F. Supp. 2d 714, 716 (E.D. Mich. 2008).

41 Future Media Architects, Inc. v. Deutsche Lufthansa AG, 2008 U.S. Dist. LEXIS 51741 (S.D.N.Y. July 8, 2008).

42 See AARP, 2009 U.S. Dist. LEXIS 969 (finding defendant's conduct rose to even pre-MedImmune levels); Vantage Trailers, 2008 U.S. Dist. LEXIS 7133 (applying pre-MedImmune case law and finding that because defendant did not have a substantially fixed and definite trailer design when it filed its declaratory-judgment action that there could be no actual controversy yet); Geisha, 525 F. Supp. 2d 1002 (applying pre-MedImmune case law and finding that defendant's actions in merely stating an intention to open a restaurant with a potentially infringing name and trade dress and filing an ITU trademark application at the PTO was insufficient to create an actual case or controversy); HSI IP, 510 F. Supp. 2d at 956 (applying pre-MedImmune case law and finding that defendant's filing of a TTAB action and correspondence indicating it would sue created an actual controversy).

43 eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (U.S. 2006).

44 Id. at 391.

45 35 U.S.C. § 283.

46 eBay, 547 U.S. at 393.

47 Id. at 393-94.

48 Id. at 394.

49 Lanham Act § 34, 15 U.S.C. § 1116.

50 See McCarthy, supra § 30.1 (describing the historical grant and necessity of injunctions in trademark cases).

51 See, e.g., Reno Air Racing Ass'n v. McCord, 452 F.3d 1126, 1138 (9th Cir. 2006) (upholding injunction); Audi AG v. D'Amato, 469 F.3d 534, 550 (6th Cir. 2006) (upholding injunction); Baden Sports, Inc. v. Kabushiki Kaisha Molten, 2007 U.S. Dist. LEXIS 70776, at *4 (W.D. Wash. 2007) (granting injunction against false advertising); W. Union Holdings, Inc. v. E. Union, Inc., 2007 U.S. Dist. LEXIS 66281, at *33-34 (N.D. Ga. 2007) (granting injunction); Nike, Inc. v. Nikepal Int'l, Inc., 84 U.S.P.Q.2d 1521, at *25-26 (E.D. Cal. 2007) (granting injunction in federal dilution case).

52 Microsoft Corp. v. AGA Solutions, Inc., 2008 U.S. Dist. LEXIS 95181, at *22-23 (E.D.N.Y. Nov. 21, 2008); Auburn Univ. v. Moody, 2008 U.S. Dist. LEXIS 89578, at *28-29 (M.D. Ala. Nov. 4, 2008); Talisker Corp. v. Prime W. Jordanelle, LLC, 2008 U.S. Dist. LEXIS 69268, at *26 (D. Utah Sept. 12, 2008); In-N-Out Burgers v. Chadders Rest., 2007 U.S. Dist. LEXIS 47732, at *8-9 (D. Utah June 29, 2007); Harris Research, Inc. v. Lydon, 505 F. Supp. 2d 1161, 1168 (D. Utah 2007); MyGym, LLC v. Engle, 2006 U.S. Dist. LEXIS 88375, at *34-35 (D. Utah Dec. 6, 2006).

53 Patsy's Italian Rest. v. Banas, 575 F. Supp. 2d 427, 464 n.25 (E.D.N.Y. 2008) (finding that the Second Circuit had not held that eBay applied to trademark actions in granting a permanent injunction under the Circuit's prior standards).

54 Id.

55 Burgess v. Gilman, 475 F. Supp. 2d 1051, 1055 (D. Nev. 2007) (quoting Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 612 n.3 (9th Cir. 1989) (applying the presumption in the context of granting a preliminary injunction)).

56 35 U.S.C. § 283 (Patent Act); 15 U.S.C. § 1116 (Trademark Act).

57 See, e.g., Amazon.com v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1350 (Fed. Cir. 2001) (applying presumption in patent case); Vision Sports, 888 F.2d at 612 n.3 (applying presumption in trademark case).

58 Hologic, Inc. v. Senorx, Inc., 2008 WL 1360035, at *15 (N.D. Cal. Apr. 25, 2008) ("[I]t does not appear that presumption of irreparable harm should be extended to preliminary injunction applications involving patents."); Precision Automation, Inc. v. Tech. Servs., Inc., 2007 WL 448073, at *3 (D. Or. Dec. 14, 2007) (holding that eBay abolished presumption of irreparable harm in preliminary injunction context); Tiber Labs., LLC v. Hawthorn Pharms., Inc., 527 F. Supp. 2d 1373, 1380 (N.D. Ga. 2007) ("This court agrees that eBay does not leave room for a presumption of irreparable injury in patent cases, whether raised at the preliminary or permanent injunction phase."); Sun Optics, Inc. v. FGX Int'l, Inc., 2007 WL 2228569, at *3 (D. Del. Aug. 2, 2007) ("Of course, the court has concluded that such a presumption [of irreparable harm in a preliminary injunction] did not survive the Supreme Court's analysis in eBay . . . ."); Torspo Hockey Int'l, Inc. v. Kor Hockey Ltd., 491 F. Supp. 2d 871, 881 (D. Minn. 2007) ("[T]he Court finds that it may not presume that a patentee who is likely to succeed on the merits at trial will suffer irreparable harm in the absence of a preliminary injunction."); Erico Int'l Corp. v. Doc's Mktg., Inc., No. 05-2924, 2007 WL 108450, at *7 (N.D. Ohio Jan. 9, 2007) (holding that eBay's elimination of the presumption of irreparable harm "likely applies with even greater force at the preliminary injunction stage"); Canon Inc. v. GCC Int'l Ltd., 450 F. Supp. 2d 243, 254 (S.D.N.Y. 2006) ("Consistent with those principles [in eBay], the [preliminary-injunction] movant must demonstrate the likelihood of irreparable injury in the absence of a grant of the requested injunction."); Voilé Mfg. Corp. v. Dandurand, 551 F. Supp. 2d 1301, 1306 (D. Utah 2008) ("The court now joins these district courts and holds that eBay eliminated the presumption of irreparable harm in preliminary injunction cases." (citing Precision Automation, Tiber Labs., Sun Optics, Torspo Hockey, and Canon)).

But see Christiana Indus. v. Empire Elec. Inc., 443 F. Supp. 2d 870, 884 (E.D. Mich. 2006); PHG Techs., LLC v. Timemed Labeling Sys., 2006 WL 2670967, at *18 (M.D. Tenn. Sept. 18, 2006); Abbott Labs. v. Sandoz, Inc., 500 F. Supp. 2d 807, 842 (N.D. Ill. 2007).

59 See Abbott Labs. v. Sandoz, Inc., 2008 WL 4636167, at *21 (Fed. Cir. Oct. 21, 2008) ("Sandoz states that the Court's recent decision in [eBay] negates any presumption of entitlement to an injunction upon a finding of likelihood that a patent will be sustained and found infringed. The district court did not apply such a presumption, but fully considered all of the legal and equitable factors.").

60 See N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1228 (11th Cir. 2008) ("[A] strong case can be made that eBay's holding necessarily extends to the grant of preliminary injunctions under the Lanham Act."); Blue Bell Creameries, L.P. v. Denali Co., LLC, 2008 U.S. Dist. LEXIS 58083, at *17-18 (S.D. Tex. July 31, 2008) (citing N. Am. Med., but holding that plaintiff did not need to rely on the presumption of irreparable harm anyway); Tillery v. Leonard & Sciolla, LLP, 437 F. Supp. 2d 312, 329 (E.D. Pa. 2006) ("The recent decision of the Supreme Court in eBay Inc. v. MercExchange casts doubt on the continued validity of the irreparable harm presumption.").

61 E. Gluck Corp. v. Rothenhaus, 585 F. Supp. 2d 505, 519 (S.D.N.Y. 2008) ("[T]he presumption still stands in this Circuit for preliminary injunctions."); TM Computer Consulting, Inc. v. Apothacare, LLC, 2008 U.S. Dist. LEXIS 69284, at *24-25 (D. Or. Sept. 11, 2008) (finding eBay "was in the context of determining whether to issue a permanent injunction in a patent case"); Nat'l League of Junior Cotillions, Inc. v. Porter, 2007 U.S. Dist. LEXIS 58117, at *18-21 (W.D.N.C. Aug. 9, 2007) ("[N]either the Supreme Court nor the Fourth Circuit has explicitly extended eBay's reasoning to preliminary injunctions.").

62 Paulsson Geophysical Servs. v. Sigmar, 529 F.3d 303, 313 (5th Cir. 2008) (finding the issue a "difficult question" before finding the plaintiff established irreparable harm under the facts of the case); Lorillard Tobacco Co. v. Engida, 213 F. App'x 654, 657 (10th Cir. 2007) (finding that regardless, the plaintiff had not shown that any harm it would suffer in the absence of an injunction outweighed the potential harm to the defendant if an injunction were granted).

63 Canfield v. Health Commc'ns, Inc., 2008 U.S. Dist. LEXIS 28662, at *5-6 (C.D. Cal. Apr. 1, 2008) (citing Abercrombie & Fitch Co. v. Moose Creek, Inc., 486 F.3d 629, 633 (9th Cir. 2007) (vacating a grant of preliminary injunction without discussing eBay).

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