Trademark Infringement: Demonstrating Irreparable Harm to Obtain an Injunction

Transcription

1 Presenting a live 90-minute webinar with interactive Q&A Trademark Infringement: Demonstrating Irreparable Harm to Obtain an Injunction Navigating Inconsistent Court Treatment, Proving Harm With and Without Survey Evidence THURSDAY, APRIL 21, pm Eastern 12pm Central 11am Mountain 10am Pacific Today s faculty features: Jonathan Hudis, Partner, Quarles & Brady, Washington, D.C. Uli Widmaier, Partner, Pattishall McAuliffe Newbury Hilliard & Geraldson, Chicago The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions ed to registrants for additional information. If you have any questions, please contact Customer Service at ext. 10.

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5 Trademark Infringement: Demonstrating Irreparable Harm to Obtain an Injunction Navigating Inconsistent Court Treatment Jonathan Hudis (202) April 21, 2016

6 Historical Standards for Granting Injunctive Relief For permanent injunctive relief, federal courts used a fourfactor test, under which the moving party must show that : 1) It had suffered an irreparable injury; 2) Legal remedies were inadequate; 3) Considering the balance of hardships between the plaintiff and defendant, a remedy in equity was warranted; 4) An injunction would not be against public interest. See, e.g., Weinberger v. Romero-Barcelo, 456 U.S. 305, 313 (U.S. 1982). 6

7 Historical Standards for Granting Injunctive Relief To obtain temporary injunctive relief, federal courts used a similar four-factor test, under which the moving party must show that: 1) It had likelihood of success on the merits; 2) It was likely to suffer an irreparable injury; 3) Considering the balance of hardships between the plaintiff and defendant, a remedy in equity was warranted; 4) An injunction was in the public interest. See, e.g., Univ. of Tex. v. Camenisch, 451 U.S. 390, 392 (U.S. 1981). 7

8 Historical Basis for Granting Injunctive Relief in Trademark Cases Federal Courts traditionally applied a rather lenient standard when granting injunctions in trademark cases: Once a plaintiff showed it had a valid mark that was infringed a likelihood of success on the merits irreparable harm was presumed. See Brookfield Communs., Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1066 (9th Cir. 1999) (noting application of presumption in trademark cases). 8

9 Historical Basis for Granting Injunctive Relief in Trademark Cases The presumption of irreparable harm in trademark cases can be traced back to Judge Learned Hand s assertion in Yale Electric Corp. v. Robertson, 26 F.2d 972 (2d Cir. 1928), commenting on the loss of control over goodwill when granting an injunction in trademark infringement cases: This is an injury, even though the borrower does not tarnish [the mark], or divert any sales by its use; for a reputation, like a face, is the symbol of its possessor and creator, and another can use it only as a mask. 9

10 The Traditional Trademark Law Presumption Federal Courts Considering whether a Preliminary Injunction would Issue Required an Essential Fifth Element: a Showing of a Probability of Success on the Merits at Trial. If a Probability of Success on the Merits was Shown, there was a Presumption that the Requirement of Proving Irreparable Harm was Satisfied. McCarthy, T. J., McCarthy on Trademarks and Unfair Competition, 30:47.30 (4 th ed., Thomson Reuters 2014). 10

11 The Traditional Trademark Law Presumption Irreparable harm was presumed in trademark cases because: Likelihood of confusion puts the goodwill associated with a trademark owner s business at risk. This type of injury is difficult to quantify. Monetary relief is inadequate to compensate for the loss over control of reputation. 11

12 What Now is Required for an Injunction? Plaintiff Has Suffered Irreparable Injury. Remedies Available at Law, such as Monetary Damages, are Inadequate to Compensate for that Injury. Considering the Balance of Hardships between the Plaintiff and Defendant, an Equitable Remedy is Warranted. The Public Interest would not be Disserved by the Entry of the Injunction. ebay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006). (considering requirements for a permanent injunction) 12

13 For Purposes of Our Discussion: Points to Remember about ebay ebay was a Patent Case. The Relief Sought in ebay was a Permanent Injunction. Among the Pronouncements of ebay was that an Injunction is Not Automatic upon a Finding of Validity and Infringement (that is, Irreparable Injury must be Proven, and Not Presumed). ebay v. MercExchange, 547 U.S. at U.S. at

14 Another Point to Consider The Supreme Court also has held that a preliminary injunction cannot be based on the mere possibility of irreparable harm. Irreparable harm must be likely. Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7 (2008). 14

15 If ebay Effectively Dispensed with the Presumption of Irreparable Harm in Trademark Cases, then What is Required to Show Irreparable Harm for Purposes of Obtaining an Injunction? (McCarthy) The TM Owner s Business Goodwill and Reputation are in Peril. Mistaken Ass n of Negative Impressions of Def s G/S with Pl. Loss of Control over Quality over G/S Associated with the Mark. McCarthy, Thomas J., McCarthy on Trademarks and Unfair Competition, 30:47.30 (4 th ed., Thomson Reuters 2014). 15

16 If ebay Effectively Dispensed with the Presumption of Irreparable Harm in Trademark Cases, then What is Required to Show Irreparable Harm for Purposes of Obtaining an Injunction? (Ross) Loss of Customers. Loss of Goodwill / Reputation. Actual (Past/Ongoing) or Threatened (In the Future). Ross, Terence P., Intellectual Property Law: Damages and Remedies 11.05[2][a][i] (Law Journal Press 2014). 16

17 If ebay Effectively Dispensed with the Presumption of Irreparable Harm in Trademark Cases, then What is Required to Show Irreparable Harm for Purposes of Obtaining an Injunction? (Banner) Risk of Reputational Loss. Lack of Quality Control over G/S Associated with the Mark. Def s Acts or Omissions that have a Tendency to Deceive. Complaints as to Quality of G/S Provided. Queries as to Whether the Pl and Def are Related. Lost Business Due to the Confusion. Banner, Brian E., Trademark Infringement Remedies, Chs. 4.III.B., 5.I.C.2., 6.III.A.2. (2d ed., Bloomberg BNA 2014). 17

18 Proof of Irreparable Harm & TM Preliminary Injunctions: What Has Worked? Cybersquatting Case. Def, hired by Pl for ecommerce website design, registered Pl s trademark as a domain name in his own name, rather in Pl s name. Def refused to transfer domain name without substantial payment. Irreparable harm = lack of full control over websites bearing Pl s mark, and possible loss of goodwill. Jysk Bed N Linen v. Dutta-Roy, 810 F.3d 767 (11 th Cir. 2015). Licensee s sale of unauthorized food products (hamburgers) in connection with Licensor s mark, in violation of party s license agreement. Benihana, Inc. v. Benihana of Tokyo, LLC, 784 F.3d 887 (2d Cir. 2015). 18

19 Proof of Irreparable Harm & TM Preliminary Injunctions: What Has Worked? (Cont d) False Advertising Case. Literally false product performance superiority claims (i.e., more powerful steam ) made on packaging for steam irons. Irreparable injury = likely harm to Pl s brand reputation and goodwill; the fact that the parties are direct competitors, and that harm to reputation and goodwill are impossible to quantify. Groupe SEB USA, Inc. v. Euro-Pro Operating LLC, 774 F.3d 192 (3d Cir. 2014). 19

20 Proof of Irreparable Harm & TM Preliminary Injunctions: What Has Worked? Substantial Proof of Likelihood of Confusion. Risk of Loss of Goodwill and Control over Food Products associated with Mark. Difficulty of Quantifying the Effect on Pl s Brand during Nontrivial Period of Consumer Confusion. Kraft Foods Group Brands LLC v. Cracker Barrel Old Country Store, Inc., 735 F.3d 735 (7 th Cir. 2013). Impairment of TM Owner s marketing of its own products and services. Interference of TM Owner s use of the Mark by Defendant s Continuing to Represent to 3 rd Parties that Defendant Owned the Mark. Mercado-Salinas v. Bart Enters. Int l, 671 F.3d 12 (1 st Cir. 2011). 20

21 Proof of Irreparable Harm & TM Preliminary Injunctions: What Has Worked? (Cont d) Removal of UPC Codes. Absence of UPC Codes Increased Risk that Consumers Would Unwittingly Purchase Counterfeit or Defective Merchandise Associated with the Mark. Zino Davidoff SA v. CVS Corp., 571 F.3d 238 (2d Cir. 2009). Threat to Loss of Sizeable Business in Mexico in Connection with Pl s Mark. Potential Confusion by Customers as to Who Was Providing services in Mexico under Pl s Mark. Loss of Control over Technology being Associated with Pl s Mark. Paulsson Geophysical Servs. v. Sigmar, 529 F.3d 303 (5 th Cir. 2008). 21

22 Proof of Irreparable Harm & TM Preliminary Injunctions: What Has Not Worked? Issuance of Preliminary Injunction Reversed and Remanded for Further Findings. District Ct s Analysis of Irreparable Harm Cursory and Conclusory Evidence of Loss of Control over Business Reputation and Damage to Goodwill Could Constitute Irreparable Harm The Record Here Lacks Such Evidence. Evidence of Consumer Confusion is Not Equivalent to Irreparable Harm. Herb Reed Enters., LLC v. Fla. Entm t Mgt., 736 F.3d 1239 (9 th Cir. 2013), cert. denied, 135 S. Ct. 57 (2014) [Heavily Criticized by McCarthy]. Co-Existence of Parties Marks and Banking Services for Three Months with Scant Evidence of Actual Confusion Pl Failed to Make a Showing of Likelihood of Consumer Confusion Peoples Fed. Sav. Bank v. People s United Bank, 750 F. Supp.2d 217 (D. Mass. 2010), aff d, 672 F.3d 1 (1 st Cir. 2012). 22

23 Proof of Irreparable Harm & TM Preliminary Injunctions: What Has Not Worked? (Cont d) Issuance of Preliminary Injunction Reversed and Remanded for Further Findings. District Ct s Analysis of did Not Include Sufficient Findings on the Likelihood of Confusion Factors. District Ct s Analysis of did Not Include Sufficient Findings on Likelihood of Irreparable Harm due to Def s Ad Using Pl s Mark for Re-Sales of Crystal Figurines. Swarovski Aktiengesellschaft v. Bldg. #19, Inc., 704 F.3d 44 (1 st Cir. 2014). 23

24 Proof of Irreparable Harm & TM Permanent Injunctions: What Has Worked? Def s use of confusingly similar mark on truck wheels found by jury to infringe Pl s mark used in connection engine cylinder heads. Trial court issued permanent injunction, but permitted Def to continue using infringing mark if accompanied by a disclaimer. On appeal, the Sixth Circuit Court of Appeals broadened the injunction to prohibit all use of Def s infringing mark. Irreparable injury = Pl s loss of control over the reputation in its mark, a harm that is neither calculable nor precisely compensable. CFE Racing Prods., Inc. v. BMF Wheels, Inc., 793 F.3d 571 (6 th Cir. 2015). 24

25 Proof of Irreparable Harm & TM Permanent Injunctions: What Has Worked (Cont d)? DJ Pl/Ctrcl Def sold paddles and decorations bearing fraternity and sorority names, without permission by the Greek fraternal organizations. The trial court s grant of a permanent injunction, with a few limited exceptions, was affirmed on appeal. Caution: In affirming issuance of the trial court s permanent injunction, the Fifth Circuit Court of Appeals stated that all that must be proven to establish liability and the need for injunction is likelihood of confusion injury is presumed. ebay casts doubt on this reasoning. Abraham v. Alpha Chi Omega, 708 F.3d 614 (5 th Cir.), cert. denied, 134 S. Ct. 88 (2013). 25

26 Proof of Irreparable Harm & TM Permanent Injunctions: What Has Worked? Unauthorized use of Pl s ministerial service marks. Summary judgment of infringement and permanent injunction upheld on appeal. Caution: In affirming issuance of the trial court s permanent injunction, the Eleventh Circuit Court of Appeals stated that injury is presumed once a likelihood of confusion has been established. Once again, ebay casts doubt on this reasoning. Community of Christ Copyright Corp. v. Devon Park Restoration Branch of Jesus Christ s Church, 634 F.3d 1005 (11 th Cir. 2011). 26

27 Proof of Irreparable Harm & TM Permanent Injunctions: What Has Worked? Loss of Control over Pl s Reputation and Goodwill Remedies at Law Inadequate to Compensate for this Type of Harm United States Polo Ass n v. PRL USA Holdings, Inc., 800 F. Supp.2d 515 (S.D.N.Y. 2011), aff d, 511 Fed. Appx. 81 (2d Cir. 2013). Def s Website and Domain Name Used Pl s Mark to Sell Counterfeit Goods Online Remedies at Law Inadequate to Compensate for this Type of Harm Audi AG v. D Amato, 469 F.3d 534 (6 th Cir. 2006). 27

28 Proof of Irreparable Harm & TM Permanent Injunctions: What Has Not Worked? Quinta Real (Mexico company) was permanently enjoined by the trial court from entering U.S. hotel market, because it would likely cause confusion with the La Quinta U.S. hotel chain. However, La Quinta (U.S. company) already was operating hotels under its name in Mexico. The Ninth Circuit Court of appeals upheld the trial court s findings of likely confusion, but vacated the permanent injunction and remanded the case for the trial court to further consider the balance of hardships between the two companies. La Quinta Worldwide LLC v. Q.R.T.M., S.A. de C.V., 762 F.3d 867 (9 th Cir. 2014). 28

29 THANK YOU QUESTIONS? Jonathan Hudis (202)

30 Trademark Infringement: Proving Irreparable Harm through Survey Evidence Strafford Live CLE Webinar April 21, 2016 Uli Widmaier Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP

31 Irreparable Harm to Obtain Injunctive Relief A universal legal requirement, not limited to IP law. Federal Judges are not IP specialists, and are unlikely to view the requirement through an IP lens. Keep in mind the other Supreme Court case on irreparable harm! Appealing generically to trademark harm won t do. Think as a lawyer, not an IP lawyer. 31

32 Harm to marine mammals from NAVY sonar [P]laintiffs seeking preliminary relief [must] demonstrate that irreparable injury is likely in the absence of an injunction. It is impermissible to infer irreparable harm from strong likelihood of success on the merits. Winter v. Nat l Resources Defense Council, Inc., 555 U.S. 7 (2008) (emphasis in original). 32

33 Irreparable Harm Requirement: Other Factual Contexts Pindak v. Dart, 125 F. Supp. 3d 720 (N.D. Ill. 2015). Panhandlers Sec. 1983/First Amendment claim for interference with panhandling on public plaza. To obtain permanent injunctive relief, Plaintiffs must show (1) they are likely to suffer irreparable harm in the absence of injunctive relief; (2) the balance of equities tips in their favor; and (3) an injunction is in the public interest (citing Winter). First Amendment harms are presumed irreparable. Permanent injunction granted. 33

34 Irreparable Harm Requirement: Other Factual Contexts Shell Offshore Inc. v. Greenpeace, Inc., 709 F.3d 1281 (9 th Cir. 2013). Claim to prevent Greenpeace from interfering with Shell s arctic drilling. Same factors as for permanent injunctive relief, plus likelihood of success on merits. Harm requirement met through showing of unacceptable risks to human life, property and the environment. 34

35 Irreparable Harm Requirement: Other Factual Contexts Yaldo v. Wayne State University, 2015 WL (E.D. Mich. Oct. 15, 2015). Student s suit against medical school for dismissal due to tardiness and academic misconduct; No irreparable harm shown under Winter; preliminary injunction for re-enrollment denied. An injunction should issue only where the intervention of a court of equity is essential in order effectually to protect... against injuries otherwise irremediable. Quoting Weinberger v. Romero-Barcelo, 456 U.S. 305, 312 (1982) (quoting Cavanaugh v. Looney, 248 U.S. 453, 456 (1919)). 35

36 What does irreparable harm mean for trademark surveys? The traditional view: Showing irreparable harm is the same as showing via survey that consumers are likely to be confused, deceived, or misled. Is that view still valid? Must something else be shown? If so, what would that something else be? 36

37 Guidance from the Case Law? No presumption of irreparable harm based solely on a strong case of trademark infringement. Evidence of actual confusion simply underscores customer confusion, not irreparable harm. Herb Reed Enterprises, LLC v. Fla. Ent ment Mgmt., 736 F.3d 1239 (9th Cir. 2013). 37

38 Consumer Confusion Irreparable Harm? 38

39 A Catch-22? Assume a Lanham Act plaintiff conducts a valid survey showing likelihood of confusion. Before ebay/winter, that survey would have supported injunctive relief as a matter of course. But a valid likelihood of confusion survey indicates strong likelihood of prevailing on the merits. Can that same survey be used to show irreparable injury? Or is that the type of presumption that ebay/winter prohibits? 39

40 Case Law: Likelihood of Confusion May Not Be Enough [W]e do not address whether our previous rule... that a trademark plaintiff who demonstrates a likelihood of success on the merits creates a presumption of irreparable harm... is consistent with traditional equitable principles. In other words, we decline to decide whether the aforementioned presumption is analogous to the general or categorical rules rejected by the Supreme Court in ebay. Voice of the Arab World, Inc., v. MDTV Medical News Now, Inc., 645 F.3d 26, 34 (1 st Cir. 2011). 40

41 Recent Case Law: Likelihood of Confusion Is Enough Quoting ebay on irreparable harm. But holding on irreparable harm: All that must be proven to establish liability and the need for an injunction against infringement is the likelihood of confusion injury is presumed (quoting McCarthy). Abraham v. Alpha Chi Omega, 708 F.3d 614, 627 (5 th Cir. 2013). 41

42 So which is it? The case law suggests that in [the Fifth Circuit], in a Lanham Act case, the presumption is somewhere between shaky and reaffirmed. T-Mobile US, Inc. v. AIO Wireless LLC, 991 F. Supp. 2d 888, 928 (S.D. Tex. 2014) (emphasis added). That assessment was confirmed in ADT, LLC, v. Capital Connect, Inc., 2015 WL (N.D. Tex. Oct. 25, 2015). 42

43 Use Herb Reed as a wakeup call In the Ninth Circuit Herb Reed (2013) there is NO PRESUMPTION! Other Circuits are somewhere between the Fifth and the Ninth. McCarthy calls the Ninth Circuit an outlier (Sec. 30:47.30). Don t count on it! The old days of simply arguing confusion therefore irreparable harm are over. 43

44 T-Mobile (S.D. Tex. 2014): an instructive case The record is clear that Aio wanted to capture T Mobile customers. Through consumer-survey analysis and through Aio's own focus-group testing, T Mobile has presented credible evidence demonstrating that Aio's use of broad swaths or blocks of Aio plum is likely to, and, at least in some instances, actually did, cause initial-interest confusion.... This court finds a substantial likelihood of irreparable injury. T-Mobile, 991 F. Supp. 2d at 926 (emphasis added). So far, so good... 44

45 T-Mobile: from confusion to harm? T Mobile has established a likelihood of confusion. T Mobile has shown a likelihood that potential customers will be confused into thinking that Aio is affiliated or associated with T Mobile based on the confused association between Aio's use of its plum color and T Mobile's similar use of its similar magenta color. T-Mobile, 991 F. Supp. 2d at 929. Still so far, so good... 45

46 T-Mobile: exceptional showing needed to get to irreparable injury The court is not ruling that finding a likelihood of confusion automatically results in finding irreparable injury and issuing an injunction unless the defendant shows that the case is exceptional. The narrow ruling is that based on the record evidence, the likelihood of confusion over source and affiliation in this market for no-contract wireless telecommunications services creates a substantial likelihood of injury that money damages cannot remedy. T-Mobile, id. (emphasis added). 46

47 T-Mobile: injury without presumption? The products and services sold are fundamentally the same. What separates the companies is their brand identity. The evidence shows that color is a critical part of that brand identity. On this record, without presuming injury, this court finds and concludes that T Mobile has shown a likelihood of irreparable injury absent an injunction against Aio's use of large blocks or swaths of plum in its marketing and stores. T-Mobile, id. (emphasis added) (emphasis added). 47

48 Wells Fargo: a case that goes the other way? Likelihood of confusion survey: admitted into evidence, but given very little weight because of its serious deficiencies. No preliminary injunction because Wells Fargo has not presented any evidence that its brand, reputation, and/or goodwill will be harmed by defendants' alleged trademark infringement, false affiliation, and/or false advertising, and offers only the type of platitudes that were rejected by the Ninth Circuit in Herb Reed. Well Fargo & Co. v. ABD Ins. & Financial Serv s, Inc., 2014 WL (N.D. Cal. Aug. 28, 2014). 48

49 An Instructive Contrast T-Mobile: solid and credible survey evidence establishes irreparable harm without resort to any presumption. Wells Fargo: admissible but flawed survey is given very little weight and thus contributes nothing to the irreparable harm analysis. In fact, it sabotages the irreparable harm analysis. 49

50 An Interim Summary Pre-eBay cases on showing irreparable harm through surveys in Lanham Act cases: use with caution! A survey does not necessarily overcome the prohibition against presuming harm. Look for a solid causal nexus between confusion shown by survey results and irreparable harm. 50

51 Causal Nexus Pom versus Fiji Fiji Water Co., LLC. v. Fiji Mineral Water USA, LLC, 741 F. Supp. 2d 1165 (C.D. Cal. 2010). Pom Wonderful LLC. v. Pur Beverages LLC, 2015 WL (C.D. Cal. Aug. 6, 2015). 51

52 Causal Nexus Pom versus Fiji Two trademark infringement cases. Both post ebay/winter. Both discuss irreparable harm in infringement context. Fiji (2010) predates Herb Reed (2013) and its finding that confusion evidence is not enough. Pom (2015) discusses Fiji at length, and specifically in light of Herb Reed. 52

53 Fiji (2010): Irreparable Harm found Winter's explicit requirement that a party seeking a preliminary injunction must show that irreparable harm is likely, not merely possible, casts some doubt as to whether that presumption [of irreparable harm from loss of control over goodwill and reputation], alone, is sufficient. 53

54 Fiji (2010): Irreparable Harm found Finding irreparable harm: Allowing VITI to sell its bottled water with a trade dress that is confusingly similar to the FIJI trade dress jeopardizes FIJI's ability to obtain a reasonable return on this substantial investment. Even more concerning, VITI is interfering with and limiting FIJI's ability to control the reputation of FIJI's recognized brand and the perception of FIJI's premium quality bottled water. 54

55 Fiji: Survey Evidence FIJI's consumer confusion survey provides substantial evidence that actual consumers do know and recognize the FIJI brand, based at least in part on its trade dress. FIJI submitted a blinded, controlled Eveready consumer confusion survey of more than 400 respondents at a sample of malls nationwide, which reported a 24.3% confusion level after adjusting for the confusion found in the control group. VITI's own expert survey... does not discredit FIJI's survey. 55

56 Pom (2015): Interpreting Fiji after Herb Reed Recall: Herb Reed (2013) requires that a plaintiff adduce evidence of likely irreparable harm above and beyond consumer confusion. The Fiji court did not expressly make this funding. The Pom court finds that Fiji meets the Herb Reed standard. 56

57 Pom s discussion of Fiji The [Fiji] Court s reference to plaintiffs' difficulty obtaining a return on their investment was not a finding that such a risk [of loss of control over reputation and goodwill] was sufficient, in itself, to show irreparable harm. Instead, the court found it significant that plaintiffs had also made a showing of consumer confusion that was likely to prevent them from maintaining their reputation and goodwill with the public. Not... sufficient? It sure helped! 57

58 Pom: no irreparable harm found Contrasting Fiji: [W]hile the Fiji Water court had before it substantial evidence of consumer confusion in the form of an expert survey,... Pom Wonderful has proffered no evidence plausibly suggestive of likely consumer confusion or damage to its reputation and/or goodwill. 58

59 Pom: Failing to Meet the Irreparable Harm Requirement Here, there is no evidence of actual confusion, no survey suggesting actual confusion is likely, and no evidence that Pom Wonderful's ability successfully to communicate its healthfulness message has been impaired. Nor is there any other type of evidence from which the court can infer that irreparable harm is likely. 59

60 Pom: what does it mean? Show evidence of harm separate from confusion such as concrete economic injury from loss of control over reputation and goodwill. Produce a survey that creates a solid nexus between that injury and consumer confusion. That combination may establish likely irreparable injury. 60

61 Loss of Investment and Survey Evidence: The Winning Combination? Adidas America, Inc. v. Skechers USA, Inc., 2016 WL (D. Or. Feb. 12, 2016). Skechers' infringement undermines adidas's substantial investment in building its brand and the reputation of its trademarks and trade dress. adidas submitted evidence showing it has spent tens of millions promoting the Stan Smith, hundreds of thousands promoting its Supernova shoes, and nearly forty million annually on goods bearing the Three-Stripe mark. 61

62 Adidas v. Skechers adidas's evidence indicating approximately twenty percent of surveyed consumers believed the Skechers Onix was made by, approved by, or affiliated with adidas shows that adidas's carefully constructed premium brand image is likely to be confused with or associated with Skechers' value brand. 62

63 The Teaching of Adidas Similar evidence as in Fiji: showing of substantial brand investment, plus a solid confusion survey. That combination of evidence may (should?) succeed to prove irreparable harm. Note: Fiji, Pom, and Adidas are Ninth Circuit Cases, which has the strictest standard because of Herb Reed. 63

64 Other Instructive Cases National Financial Partners Corp. v. Paycom Software, Inc., 2015 WL (N.D. Illinois, June 10, 2015). ebay/winter govern in Lanham Act cases. The Court finds the Ninth and Third Circuits' reasoning persuasive and concludes that NFP must show a likelihood of irreparable harm to be entitled to a preliminary injunction (quoting Winter). 64

65 National Financial Partners: what needs to be shown? To show irreparable harm, NFP need not show that it lost business as a result of Paycom's alleged infringement. Plaintiff s survey showed 39% confusion. 65

66 National Financial Partners: a strong survey is enough! The compelling evidence of consumer confusion supports a finding of irreparable harm. Where there is such high probability of confusion, injury irreparable in the sense that it may not be fully compensable in damages almost inevitably follows, because the defendant's profits on the infringing items are often difficult to determine and confusion may cause purchasers to refrain from buying either product and to turn to those of other competitors. 66

67 Another instructive case Verisign, Inc., v. XYZ.com, LLC, 2015 WL (E.D. Va. Nov. 20, 2015). Irreparable harm not shown. Preliminary injunction denied. Plaintiff does not proffer evidence beyond their subjective belief that Defendants' statements caused harm. Plaintiff does not submit testimonial evidence via experts or consumers, and the consumer survey conducted does not measure whether any statements resulted in economic or reputational harm. 67

68 What do these cases stand for? In the Ninth Circuit, plaintiff should have a good confusion survey plus other evidence of harm that s solidly linked to the confusion evidence. In other Circuits, a strong survey may by itself suffice to establish irreparable harm. But it s best to make a broader showing. 68

69 One thing has that not changed: Poor Surveys Negate Irreparable Harm Preliminary injunction denied because the focus group and survey evidence submitted by Scotts was not reliable or probative of the critical question in this case. [E]ven if the Vigoro packaging were misleading, the denial of a preliminary injunction would cause very little harm to Scotts. The weakness of the survey evidence even though formally directed at likelihood of success on the merits in truth negated any irreparable harm. Scotts Co. v. United Industries Corp., 315 F.3d 264 (2002). That s as valid as it has always been. 69

70 Takeaways I Weak or methodologically flawed surveys are actively counterproductive. Don t introduce a survey whose design is vulnerable or whose results are feeble. Outside the Ninth Circuit, a strong survey showing consumers are confused or misled may serve to establish irreparable harm. But there are no guarantees. Your survey may have to establish an exceptional case (T- Mobile) on the merits in order to support a finding of irreparable harm. 70

71 Takeaways II Don t rely on your survey alone. Put in concrete evidence of harm resulting from confusion: investment in brand, difficulty of getting consumers back, concrete harm to brand image, etc. Get out of the presumption mindset, both when arguing your case and when putting your evidence together. Defendants: many opportunities to use ebay/winter and progeny to your advantage. 71

72 Thank you! Any question? Uli Widmaier Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP 200 South Wacker Drive, Suite 2900 Chicago, IL (312)