Two Supreme Court decisions in the past decade threw the viability of this presumption into question. The first was eBay v. MercExchange in 2006 in which the Supreme Court announced a test for injunctive relief that required the plaintiff prove “that it has suffered an irreparable injury”. This was followed by Winter v. Natural Resources Defense Council in 2008, which held that a party seeking a preliminary injunction must show that irreparable harm is “likely”, and not just “possible” as had been ruled by the Ninth Circuit.
Kent Raygor of Sheppard Mullin Richter & Hampton, said there had been “so much disarray in Federal Circuit and district courts since eBay and Winter.” Although eBay was a patent case and Winter was an environmental injury case, Raygor noted the effect on trademark cases had been profound. “Injunctions had long been a favored remedy in trademark cases,” he said.
Susan Kayser of Jones Day said different policies were leading courts to different approaches. The Fourth, Sixth and Seventh Circuits are courts where presumption still likely applies. Courts where it is unclear are the First, Third, Fifth, Eight, Tenth, Eleventh and DC Circuits, and the Federal Circuit. “This is leading to some uncertainty and some forum shopping,” said Kayser. The Second and Ninth Circuits are courts where presumption definitely does not apply.
In the Q&A section of the session, audience member David Bernstein of Debevoise & Plimpton noted that Ferring Pharmaceuticals v. Watson Pharmaceuticals also addressed the issue of irreparable harm. Bernstein filed an amicus brief in the case, which is on appeal to the Third Circuit, on behalf of INTA last year. The brief said the court should hold that a showing of likelihood of success under the Lanham Act continues to give rise to a rebuttable presumption of irreparable harm and that such a presumption is not inconsistent with the Supreme Court’s decisions in eBay and Winter. This longstanding presumption remains appropriate in Lanham Act cases, said the brief, because the injury that results from false advertising and trademark violations is inherently unquantifiable and, as such, irreparable.
