Herb Reed Enterprises, LLC v. Florida Entertainment Management, Inc.

FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

HERB REED ENTERPRISES, LLC, a No. 12-16868

Massachusetts company,

Plaintiff-counter-defendant - D.C. No.

Appellee, 2:12-cv-00560-

MMD-GWF

v.

FLORIDA ENTERTAINMENT OPINION

MANAGEMENT, INC., a Nevada

company; LARRY MARSHAK,

Defendants-counter-claimants -

Appellants.

Appeal from the United States District Court

for the District of Nevada

Miranda Du, District Judge, Presiding

Argued and Submitted

March 12, 2013—San Francisco, California

Filed December 2, 2013

Before: J. Clifford Wallace, M. Margaret McKeown,

and Sandra S. Ikuta, Circuit Judges.

Opinion by Judge McKeown;

Concurrence by Judge Wallace

2 HRE V. FLORIDA ENTERTAINMENT MGMT.

SUMMARY*

Trademark/Preliminary Injunction

Reversing the district court’s grant of a preliminary

injunction against defendants’ use of the mark “The Platters”

in connection with a vocal group, the panel held that the

likelihood of irreparable harm must be established, rather

than presumed, by a plaintiff seeking injunctive relief in the

trademark context.

The panel affirmed the district court’s holding that earlier

New York actions did not have res judicata effect. The panel

also held that the plaintiff was not barred by laches from

challenging defendants’ use of the mark.

As to the plaintiff’s likelihood of success on the

trademark infringement claim, the panel held that the district

court did not err in concluding that the defendants failed to

meet their burden of strictly proving the affirmative defense

of trademark abandonment.

The panel held that in light of eBay v. MarcExchange,

LLC, 547 U.S. 388 (2006), and Winter v. Natural Res. Def.

Council, Inc., 555 U.S. 7 (2008), a plaintiff seeking a

preliminary injunction in a trademark infringement case must

establish irreparable harm. The panel concluded that even

though the district court identified the correct legal principle,

the record did not support a determination of the likelihood of

irreparable harm.

*

This summary constitutes no part of the opinion of the court. It has

been prepared by court staff for the convenience of the reader.

HRE V. FLORIDA ENTERTAINMENT MGMT. 3

Concurring, Judge Wallace agreed that the district court’s

preliminary injunction should be reversed. He wrote

separately to emphasize that the panel was solely reviewing

a preliminary injunction and thus could express no views on

issues arising after a trial dealing with a permanent

injunction.

COUNSEL

Cameron Sean Reuber (argued) and Yuval H. Marcus, Leason

Ellis LLP, White Plains, New York; Jacob A. Reynolds,

Hutchison & Steffen, LLC, Las Vegas, Nevada, for

Defendants-Appellants.

Eric Miller Sommers (argued), Sommers Law, PLLC,

Portsmouth, New Hampshire; John Lund Krieger, Lewis and

Roca LLP, Las Vegas, Nevada, for Plaintiff-Appellee.

OPINION

McKEOWN, Circuit Judge:

“The Platters”—the legendary name of one of the most

successful vocal performing groups of the 1950s—lives on.

With 40 singles on the Billboard Hot 100 List, the names of

The Platters’ hits ironically foreshadowed decades of

litigation—“Great Pretender,” “Smoke Gets In Your Eyes,”

“Only You,” and “To Each His Own.” Larry Marshak and

his company Florida Entertainment Management, Inc.

(collectively “Marshak”) challenge the district court’s

preliminary injunction in favor of Herb Reed Enterprises

(“HRE”), enjoining Marshak from using the “The Platters”

4 HRE V. FLORIDA ENTERTAINMENT MGMT.

mark in connection with any vocal group with narrow

exceptions. We consider an issue of first impression in our

circuit: whether the likelihood of irreparable harm must be

established—rather than presumed, as under prior Ninth

Circuit precedent—by a plaintiff seeking injunctive relief in

the trademark context. In light of Supreme Court precedent,

the answer is yes, and we reverse the district court’s order

granting the preliminary injunction.

BACKGROUND

The Platters vocal group was formed in 1953, with Herb

Reed as one of its founders. Paul Robi, David Lynch, Zola

Taylor, and Tony Williams, though not founders, have come

to be recognized as the other “original” band members. The

group became a “global sensation” during the latter half of

the 1950s,1 then broke up in the 1960s as the original

members left one by one. After the break up, each member

continued to perform under some derivation of the name “The

Platters.” Marshak v. Reed, No. 96 CV 2292(NG)(MLO),

2001 WL 92225, at *4 (E.D.N.Y. and S.D.N.Y. Feb. 1, 2001)

(“Marshak I”).

Litigation has been the byproduct of the band’s

dissolution; there have been multiple legal disputes among

the original members and their current and former managers

over ownership of “The Platters” mark. Much of the

litigation stemmed from employment contracts executed in

1956 between the original members and Five Platters, Inc.

(“FPI”), the company belonging to Buck Ram, who became

the group’s manager in 1954. As part of the contracts, each

1

The Platters Biography, ROCK & ROLL HALL OF FAME,

http://rockhall.com/inductees/the-platters/bio/ (last visited June 27, 2013).

HRE V. FLORIDA ENTERTAINMENT MGMT. 5

member assigned to FPI any rights in the name “The Platters”

in exchange for shares of FPI stock. Marshak I, 2001 WL

92225, at *3. According to Marshak, FPI later transferred its

rights to the mark to Live Gold, Inc., which in turn transferred

the rights to Marshak in 2009. Litigation over the validity of

the contracts and ownership of the mark left a trail of

conflicting decisions in various jurisdictions, which provide

the backdrop for the present controversy. What follows is a

brief summary of the tangled web of multi-jurisdictional

litigation that spans more than four decades.

In 1972, FPI sued Robi and Taylor for trademark

infringement in California, resulting in a 1974 judgment in

Robi’s favor, which held that FPI “was a sham used by Mr.

Ram to obtain ownership of the name ‘Platters.’” Robi v. Five

Platters, Inc., 838 F.2d 318, 320 (9th Cir. 1988) (“Robi I”)

(quoting the 1974 decision). By contrast, an analogous

dispute between FPI and Williams in New York resulted in a

1982 decision holding that FPI had lawfully acquired

exclusive ownership of the name. Marshak I, 2001 WL

92225, at *7 (citing the 1982 decision). Williams attempted

to circumvent the New York decision by seeking declaratory

judgment in the Central District of California based on the

1974 judgment in favor of Robi. He was ultimately

unsuccessful; on appeal, we reasoned that Williams could not

avoid the claim preclusive effect of the New York judgment

by relying on issue preclusion from another case in which he

was not a party. Robi I, 838 F.2d at 328. We upheld the

judgment in favor of Robi, id. at 330, and later affirmed the

district court’s award of compensatory and punitive damages

to Robi as well as its cancellation of FPI’s three registered

trademarks using the words “The Platters.” Robi v. Five

Platters, Inc., 918 F.2d 1439, 1441 (9th Cir. 1990) (“Robi

II”).

6 HRE V. FLORIDA ENTERTAINMENT MGMT.

In 1984, FPI sued Reed for trademark infringement in the

Southern District of Florida. Marshak I, 2001 WL 92225, at

*9. The court denied Reed’s motion for summary judgment

based on the preclusive effect of the 1974 California

judgment against FPI. Id. Preferring to avoid trial, Reed

signed a court-approved stipulation of settlement in 1987,

under which he assigned to FPI all rights he had in FPI stock,

retained the right to perform as “Herb Reed and the Platters,”

and agreed not to perform under the name “The Platters.”

However, the settlement included an “escape clause”:

In the event that a court of competent

jurisdiction enters a final order with all

appeals being exhausted that provides that

The Five Platters, Inc. has no right in the

name “The Platters,” then nothing contained

herein shall be construed to limit Herbert

Reed’s rights in the name “The Platters” and

this agreement shall not inure to any party

other than The Five Platters, Inc., and its

successors and assigns or Herbert Reed.

A key question is whether the escape clause has now been

triggered.

In 2001, Marshak, FPI, and other plaintiffs sued Reed and

others for trademark infringement in the Eastern District of

New York; Reed counterclaimed, also alleging trademark

infringement. Marshak I, 2001 WL 92225, at *1. The court

interpreted the 1987 settlement as “barr[ing] Reed from

asserting that he has any right to the name ‘The Platters’ as

against FPI or those claiming through FPI except as

specifically allowed in that agreement, or from otherwise

interfering with plaintiffs’ rights to the use of ‘The Platters.’”

HRE V. FLORIDA ENTERTAINMENT MGMT. 7

Id. at *15. The court determined that the settlement’s escape

clause had not been triggered either by Robi I, because the

Ninth Circuit reversed the judgment in favor of Williams

indicating that FPI still had some rights to “The Platters”

mark, or by Robi II, because cancellation of FPI’s federal

mark registration did not resolve the question whether FPI

was entitled to use the name “The Platters.” Id. at *19–20.

The district court enjoined Reed from, among other things,

interfering with FPI and Marshak’s use of the name “The

Platters” except as permitted in the 1987 settlement (“the

2001 injunction”). Id. at *21. The Second Circuit affirmed.

Marshak v. Reed, 13 F. App’x 19 (2d Cir. 2001).

Reed appealed Marshak I a second time on the basis that

an unpublished Ninth Circuit memorandum issued around the

same time triggered the 1987 settlement’s escape clause.2

The Second Circuit vacated and remanded Marshak I,

Marshak v. Reed, 34 F. App’x 8 (2d Cir. 2002), but later

affirmed the district court’s decision to adhere to its earlier

decisions because the Ninth Circuit memorandum left “open

the possibility, however remote, that FPI can establish a

common law trademark right to the name ‘The Platters.’”

Marshak II, 329 F. Supp. 2d at 185, aff’d, Marshak v. Reed,

87 F. App’x 208 (2d Cir. 2004).

2

The memorandum held that FPI and other plaintiffs “cannot assert a

common law trademark in ‘The Platters’” unless they “present evidence

that they used the trademark in a way that was not false and misleading.”

Five Platters, Inc. v. Powell, 7 F. App’x 794, 795 (9th Cir. 2001). The

case was remanded for an evidentiary hearing, although the disposition

noted that FPI was “unlikely” to be able to make the required showing.

Id. & n.6. On remand FPI abandoned the trademark claim and the

evidentiary hearing never occurred. Marshak v. Reed, 229 F. Supp. 2d

179, 182 n.2, 184–85 (E.D.N.Y. 2002) (“Marshak II”) (describing the

remand).

8 HRE V. FLORIDA ENTERTAINMENT MGMT.

HRE, which manages Reed’s business affairs and holds

his rights, sued FPI and other defendants for trademark

infringement in the District of Nevada in 2010. To get

around the restrictions in the 1987 settlement, HRE creatively

alleged that it owned the “Herb Reed and the Platters” mark

and that defendants used a confusingly similar mark, namely

“The Platters.” Herb Reed Enters., Inc. v. Bennett, No. 2:10-

CV-1981 JCM (RJJ), 2011 WL 220221, at *1 (D. Nev. Jan.

21, 2011). FPI was not represented—according to Marshak,

FPI was by this time a defunct corporation that had already

transferred and no longer owned any rights to “The Platters”

mark. The action resulted in a 2011 default judgment and

permanent injunction declaring that (1) FPI “never used the

mark ‘The Platters’ in a manner that [was] not false and

misleading and thus never acquired common law rights to the

mark,” and (2) “Reed, having first used the mark ‘The

Platters’ in commerce in 1953, and having continuously used

the mark in commerce since then has superior rights to the

mark to all others,” including FPI and “anyone claiming

rights from or through” FPI. Herb Reed Enters., Inc. v.

Monroe Powell’s Platters, LLC, 842 F. Supp. 2d 1282, 1287

(D. Nev. 2012) (quoting the 2011 judgment).

In 2012, HRE successfully obtained a preliminary

injunction against Monroe Powell, FPI’s former performer

employee, and his company in a trademark infringement

action in the District of Nevada. Id. at 1284. Because Powell

claimed to have acquired rights to “The Platters” mark

through FPI, there was a question as to whether the 1987

settlement limited Reed’s ability to pursue a remedy. The

district court held that, “even assuming that the 1987

stipulation applies, the escape clause has been triggered and

no longer bars Reed from suing FPI or those claiming through

FPI for trademark infringement.” Id. at 1288. The court

HRE V. FLORIDA ENTERTAINMENT MGMT. 9

reasoned that the 2011 Nevada default judgment, which

“determined that FPI ‘has no right in the name “The Platters”’

as required by the 1987 stipulation,” was “a final order with

all appeals being exhausted” because the judgment was never

appealed. Id. at 1288–89 (quoting the 2011 judgment).

In the period between the filing of the two Nevada

actions, Marshak sued Reed for civil contempt in the Eastern

District of New York, alleging that Reed’s first Nevada

lawsuit violated the 2001 injunction. Marshak v. Reed, Nos.

96-CV-2292 (NG)(RML), 11-CV-2582 (NG)(RML), 2012

WL 832269 (E.D.N.Y. Mar. 12, 2012). The court denied

Marshak’s motion, holding that neither Reed’s use of the

mark “Herb Reed and the Platters” nor Reed’s suit in Nevada

protecting that mark constituted a violation of the injunction.

Id. at *3–5.

Last year brought yet another lawsuit. HRE commenced

the present litigation in 2012 against Marshak in the District

of Nevada, alleging trademark infringement and seeking a

preliminary injunction against Marshak’s continued use of

“The Platters” mark. The district court held that HRE was

not precluded from asserting a right in “The Platters” mark

either by the 1987 settlement—the escape clause of which

had been triggered by the 2011 Nevada default judgment—or

by the equitable doctrine of laches. Herb Reed Enters., LLC

v. Fla. Entm’t Mgmt., Inc., No. 2:12-cv-00560-MMD-GWF,

2012 WL 3020039, at *8 (D. Nev. Jul. 24, 2012). The district

court found that HRE had established a likelihood of success

on the merits, a likelihood of irreparable harm, a balance of

hardships in its favor, and that a preliminary injunction would

serve public interest. Id. at *8–17. Accordingly, the district

court granted the preliminary injunction and set the bond at

10 HRE V. FLORIDA ENTERTAINMENT MGMT.

$10,000. Id. at *19. Marshak now appeals from the

preliminary injunction.

ANALYSIS

I. RES JUDICATA

As an initial matter, we address whether HRE is

foreclosed from bringing the underlying suit by the New

York actions, Marshak I and Marshak II, which resulted in

the 2001 injunction barring Reed from interfering with

Marshak’s use of “The Platters” mark except as permitted by

the 1987 settlement. The district court correctly held that the

New York actions do not have res judicata effect.

This action is neither barred by claim preclusion, which

prohibits “the parties or their privies from relitigating issues

that were or could have been raised” in an action resulting in

“[a] final judgment on the merits,” Federated Department

Stores, Inc. v. Moitie, 452 U.S. 394, 398 (1981), nor by issue

preclusion, which prohibits “successive litigation of an issue

of fact or law actually litigated and resolved in a valid court

determination essential to the prior judgment,” New

Hampshire v. Maine, 532 U.S. 742, 748–49 (2001). HRE is

not “relitigating issues that were or could have been raised”

in the New York actions because HRE could not assert its

right in “The Platters” name at that time. As the 2001

injunction confirmed, Herb Reed was then bound by the 1987

settlement, and the escape clause had not yet been triggered.

Additionally, the New York actions did not come to a final

judgment on the merits of the trademark dispute. Instead, the

Eastern District of New York enjoined Reed from pursuing

that litigation on the merits because of the 1987 settlement.

The New York cases thus do not have res judicata effect on

HRE V. FLORIDA ENTERTAINMENT MGMT. 11

either the issue of whether the much later Nevada actions

triggered the escape clause, or the issue of trademark

ownership, both of which relate to this appeal.

Marshak quibbles with the district court’s reliance on the

res judicata effect of the Nevada actions—the 2011 default

judgment against FPI and the 2012 preliminary injunction

against Powell. But the district court explicitly declined to

use the 2011 default judgment as offensive collateral estoppel

against Marshak on the issue of trademark ownership. HRE,

2012 WL 3020039, at *7–8. While the district court

referenced the “last in time rule” to resolve any contradiction

between the New York actions and the Nevada actions as to

whether the 1987 settlement’s escape clause has been

triggered, HRE, 2012 WL 3020039, at *7, such reliance was

unnecessary. The language of the escape clause itself is

sufficient and does not limit the type of action or who may

bring an action that ultimately results in “a final order with all

appeals being exhausted that provides that [FPI] has no right

in the name ‘The Platters.’” Thus, Marshak’s complaint that

he was not a party to the 2011 default judgment has no

traction. Given that there is now a valid judgment with all

appeals exhausted declaring that FPI never acquired common

law rights to “The Platters” mark, the escape clause has been

triggered on its own terms, and HRE is no longer bound by

the settlement’s restrictions or the 2001 injunction enforcing

the settlement.

II. LACHES

Next, we consider whether HRE is barred from

challenging Marshak’s use of “The Platters” mark by

laches—“an equitable time limitation on a party’s right to

bring suit, resting on the maxim that one who seeks the help

12 HRE V. FLORIDA ENTERTAINMENT MGMT.

of a court of equity must not sleep on his rights.” Jarrow

Formulas, Inc. v. Nutrition Now, Inc., 304 F.3d 829, 835 (9th

Cir. 2002) (internal quotation marks and citations omitted).

The district court properly determined that laches does not

foreclose this suit.

The time gap from when HRE “knew or should have

known about its potential cause of action” to when it filed its

action was not long enough to be unreasonable. Id. at 838.

HRE could not bring the trademark infringement suit until

there was a final ruling with all appeals exhausted that

triggered the escape clause. That ruling came in the Nevada

default judgment in May 2011.3 HRE brought this action in

April 2012, less than a year after the escape clause was

triggered, and less than one month after the Eastern District

of New York determined that HRE had not violated that

court’s 2001 injunction. HRE, 2012 WL 3020039, at *8.

This delay of under one year is shorter than the most

analogous state statute of limitations period, giving rise to a

strong presumption against laches. Jarrow Formulas,

304 F.3d at 837 (“[W]e hold that if a [Lanham Act] § 43(a)

claim is filed within the analogous state limitations period,

the strong presumption is that laches is inapplicable. . . .”).

Marshak agrees that the limitations period from the most

analogous action under state law is three years under

Nevada’s fraud and “catchall” statute of limitations. Nev.

Rev. Stat. § 11.190(3). Because HRE brought its trademark

3

Marshak’s argument that HRE should have acted sooner to trigger the

escape clause instead of waiting years until after FPI had become a

defunct entity is inapposite. Marshak essentially seeks a roundabout way

to raise a laches defense in a separate action—HRE’s 2010 suit against

FPI and others in the District of Nevada—that has already been decided

and is not before this court. That argument should have been raised in a

timely appeal of the 2011 default judgment.

HRE V. FLORIDA ENTERTAINMENT MGMT. 13

infringement claim well within three years, we presume that

laches is inapplicable. HRE simply did not dally or

unconscionably sit on its claim. Thus, laches does not

preclude consideration of HRE’s trademark infringement

claim and request for preliminary injunction.

III. PRELIMINARY INJUNCTION

To obtain a preliminary injunction, HRE “must establish

that [it] is likely to succeed on the merits, that [it] is likely to

suffer irreparable harm in the absence of preliminary relief,

that the balance of equities tips in [its] favor, and that an

injunction is in the public interest.” Winter v. Natural Res.

Def. Council, Inc., 555 U.S. 7, 20 (2008). We review a

district court’s preliminary injunction for abuse of discretion,

a standard of review that is “limited and deferential.”

Johnson v. Couturier, 572 F.3d 1067, 1078 (9th Cir. 2009).

If the district court “identified and applied the correct legal

rule to the relief requested,” we will reverse only if the

court’s decision “resulted from a factual finding that was

illogical, implausible, or without support in inferences that

may be drawn from the facts in the record.” United States v.

Hinkson, 585 F.3d 1247, 1263 (9th Cir. 2009) (en banc).

Marshak’s key arguments are that the district court erred

in concluding that HRE had established a likelihood of

success on the merits because Reed abandoned “The Platters”

mark and that the district court erred in finding a likelihood

of irreparable harm.

14 HRE V. FLORIDA ENTERTAINMENT MGMT.

A. LIKELIHOOD OF SUCCESS ON THE UNDERLYING

TRADEMARK DISPUTE

As to its trademark infringement claim, to establish a

likelihood of success on the merits HRE must show that it is

“(1) the owner of a valid, protectable mark, and (2) that the

alleged infringer is using a confusingly similar mark.”

Grocery Outlet, Inc. v. Albertson’s, Inc., 497 F.3d 949, 951

(9th Cir. 2007) (per curiam). Tellingly, Marshak does not

challenge the district court’s conclusions on these two points,4

except by asserting the affirmative defense of abandonment

on the alleged basis that Reed abandoned “The Platters” mark

by signing the 1987 Florida settlement. But “[a]bandonment

of a trademark, being in the nature of a forfeiture, must be

strictly proved.” Prudential Ins. Co. of Am. v. Gibraltar Fin.

Corp. of Cal., 694 F.2d 1150, 1156 (9th Cir. 1982). The

district court did not err in concluding that Marshak failed to

meet that burden.

Marshak has not established either of the two

requirements of abandonment under 15 U.S.C. § 1127:

(1) discontinuance of trademark use, and (2) intent not to

resume use. Although non-use for three consecutive years

constitutes prima facie evidence of abandonment, the

4

Marshak does not dispute the district court’s finding that HRE is the

senior user, or the district court’s reasoning invaliding Marshak’s claims

of ownership. Nor does Marshak contest the district court’s determination

that Marshak’s use of “The Platters” mark is confusingly similar to HRE’s

use of both “The Platters” and “Herb Reed and the Platters” marks

according to the Ninth Circuit’s test. See AMF Inc. v. Sleekcraft Boats,

599 F.2d 341, 348–49 & n.11 (9th Cir. 1979) (describing the factors

relevant to determining whether the alleged infringer is using a

confusingly similar mark), abrogated in part on other grounds by Mattel,

Inc. v. Walking Mountain Prods., 353 F.3d 792, 810 (9th Cir. 2003).

HRE V. FLORIDA ENTERTAINMENT MGMT. 15

standard for non-use is high. Id. Non-use requires “complete

cessation or discontinuance of trademark use,” where “use”

signifies any use in commerce and “includes the placement of

a mark on goods sold or transported.” Electro Source, LLC

v. Brandess-Kalt-Aetna Grp., Inc., 458 F.3d 931, 936, 938

(9th Cir. 2006) (emphasis in original). “Even a single

instance of use is sufficient against a claim of abandonment

of a mark if such use is made in good faith.” Carter-Wallace,

Inc. v. Proctor & Gamble Co., 434 F.2d 794, 804 (9th Cir.

1970).

HRE presented evidence that, despite the 1987 settlement,

it continued to receive royalties from the sale of The Platters’

previously recorded material. The district court permissibly

relied on the declaration of HRE’s general manager that

“[s]ince . . . approximately 1953, Reed continuously received

royalties from Platters recordings, including during the time

period after the 1987 Stipulation was signed and after the

2001 Injunction.” The declaration further indicates that HRE

received and continues to receive royalties from domestic and

international sales and names a range of companies that pay

royalties for the use of The Platters’ original recordings in

other compilations, television ads, movies, or other media.

The receipt of royalties is a genuine but limited usage of the

mark that satisfies the “use” requirement, especially when

viewed within the totality of the circumstances—namely, that

Reed was constrained by the settlement. See Electro Source,

458 F.3d at 940 (“Because the abandonment inquiry is tied to

the unique circumstances of each case, it is appropriate to

look at the totality of the circumstances to determine if

genuine, albeit limited, usage of the mark qualifies a

trademark use ‘in the ordinary course of trade’ under

§ 1127.”); see also Carter-Wallace, 434 F.2d at 803–04

(holding that a mark had not been abandoned when the

16 HRE V. FLORIDA ENTERTAINMENT MGMT.

trademark holder offered a legitimate reason for making only

nominal sales, namely waiting for trademark ownership

issues to be fully litigated and resolved). Receipt of royalties

certainly qualifies as placement of “The Platters” mark on

goods sold, and supports the finding that there was no

abandonment. See Marshak v. Treadwell, 240 F.3d 184, 199

(3d Cir. 2001) (“A successful musical group does not

abandon its mark unless there is proof that the owner ceased

to commercially exploit the mark’s secondary meaning in the

music industry.”) (internal quotation marks and citation

omitted).

We are not persuaded by Marshak’s view that HRE’s

receipt of royalties violated the 1987 settlement and thus is

not a “bona fide use” under 15 U.S.C. § 1127, capable of

obviating abandonment. It is far from clear that the 1987

settlement, which focused on “the right to perform or

entertain” and explicitly excluded “commercial recordings,”

forbade HRE from collecting royalties on previously recorded

material. Additionally, when Marshak sued Reed for civil

contempt alleging that Reed had violated the 2001 injunction

enforcing the 1987 settlement, Marshak “d[id] not contest

that Reed was entitled to such royalties,” and the Eastern

District of New York held that there was not sufficient

evidence “that Reed used ‘The Platters’ mark in a manner

inconsistent with the 2001 Injunction.” Marshak, 2012 WL

832269, at *3.

We conclude that the record supports the district court’s

determination that HRE did not abandon “The Platters” mark.

HRE V. FLORIDA ENTERTAINMENT MGMT. 17

B. LIKELIHOOD OF IRREPARABLE HARM

We next address the likelihood of irreparable harm. As

the district court acknowledged, two recent Supreme Court

cases have cast doubt on the validity of this court’s previous

rule that the likelihood of “irreparable injury may be

presumed from a showing of likelihood of success on the

merits of a trademark infringement claim.” Brookfield

Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036,

1066 (9th Cir. 1999) (emphasis added). Since Brookfield, the

landscape for benchmarking irreparable harm has changed

with the Supreme Court’s decisions in eBay Inc. v.

MercExchange, L.L.C., 547 U.S. 388, in 2006, and Winter in

2008.

In eBay, the Court held that the traditional four-factor test

employed by courts of equity, including the requirement that

the plaintiff must establish irreparable injury in seeking a

permanent injunction, applies in the patent context. 547 U.S.

at 391. Likening injunctions in patent cases to injunctions

under the Copyright Act, the Court explained that it “has

consistently rejected . . . a rule that an injunction

automatically follows a determination that a copyright has

been infringed,” and emphasized that a departure from the

traditional principles of equity “should not be lightly

implied.” Id. at 391–93 (citations omitted). The same

principle applies to trademark infringement under the

Lanham Act. Just as “[n]othing in the Patent Act indicates

that Congress intended such a departure,” so too nothing in

the Lanham Act indicates that Congress intended a departure

for trademark infringement cases. Id. at 391–92. Both

statutes provide that injunctions may be granted in

accordance with “the principles of equity.” 35 U.S.C. § 283;

15 U.S.C. § 1116(a).

18 HRE V. FLORIDA ENTERTAINMENT MGMT.

In Winter, the Court underscored the requirement that the

plaintiff seeking a preliminary injunction “demonstrate that

irreparable injury is likely in the absence of an injunction.”

555 U.S. at 22 (emphasis in original) (citations omitted). The

Court reversed a preliminary injunction because it was based

only on a “possibility” of irreparable harm, a standard that is

“too lenient.” Id. Winter’s admonition that irreparable harm

must be shown to be likely in the absence of a preliminary

injunction also forecloses the presumption of irreparable

harm here.

Following eBay and Winter, we held that likely

irreparable harm must be demonstrated to obtain a

preliminary injunction in a copyright infringement case and

that actual irreparable harm must be demonstrated to obtain

a permanent injunction in a trademark infringement action.

Flexible Lifeline Sys. v. Precision Lift, Inc., 654 F.3d 989,

998 (9th Cir. 2011); Reno Air Racing Ass’n, Inc., v. McCord,

452 F.3d 1126, 1137–38 (9th Cir. 2006). Our imposition of

the irreparable harm requirement for a permanent injunction

in a trademark case applies with equal force in the

preliminary injunction context. Amoco Prod. Co. v. Village

of Gambell, AK, 480 U.S. 531, 546 n.12 (1987) (explaining

that the standard for a preliminary injunction is essentially the

same as for a permanent injunction except that “likelihood

of” is replaced with “actual”). We now join other circuits in

holding that the eBay principle—that a plaintiff must

establish irreparable harm—applies to a preliminary

injunction in a trademark infringement case. See N. Am. Med.

Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1228–29

(11th Cir. 2008); Audi AG v. D’Amato, 469 F.3d 534, 550

(6th Cir. 2006) (applying the requirement to a permanent

injunction in a trademark infringement action).

HRE V. FLORIDA ENTERTAINMENT MGMT. 19

Having anticipated that the Supreme Court’s decisions in

eBay and Winter signaled a shift away from the presumption

of irreparable harm, the district court examined irreparable

harm in its own right, explaining that HRE must “establish

that remedies available at law, such as monetary damages, are

inadequate to compensate” for the injury arising from

Marshak’s continuing allegedly infringing use of the mark.

HRE, 2012 WL 3020039, at *15. Although the district court

identified the correct legal principle, we conclude that the

record does not support a determination of the likelihood of

irreparable harm.

Marshak asserts that the district court abused its

discretion by relying on “unsupported and conclusory

statements regarding harm [HRE] might suffer.” We agree.

The district court’s analysis of irreparable harm is cursory

and conclusory, rather than being grounded in any evidence

or showing offered by HRE. To begin, the court noted that it

“cannot condone trademark infringement simply because it

has been occurring for a long time and may continue to

occur.” The court went on to note that to do so “could

encourage wide-scale infringement on the part of persons

hoping to tread on the goodwill and fame of vintage music

groups.” Fair enough. Evidence of loss of control over

business reputation and damage to goodwill could constitute

irreparable harm. See, e.g., Stuhlbarg Int’l Sales Co., Inc. v.

John D. Brush and Co., Inc., 240 F.3d 832, 841 (9th Cir.

2001) (holding that evidence of loss of customer goodwill

supports finding of irreparable harm). Here, however, the

court’s pronouncements are grounded in platitudes rather than

evidence, and relate neither to whether “irreparable injury is

likely in the absence of an injunction,” Winter, 555 U.S. at 22,

nor to whether legal remedies, such as money damages, are

20 HRE V. FLORIDA ENTERTAINMENT MGMT.

inadequate in this case. It may be that HRE could establish

the likelihood of irreparable harm. But missing from this

record is any such evidence.

In concluding its analysis, the district court simply cited

to another district court case in Nevada “with a substantially

similar claim” in which the court found that “the harm to

Reed’s reputation caused by a different unauthorized Platters

group warranted a preliminary injunction.” HRE, 2012 WL

3020039, at *15–16. As with its speculation on future harm,

citation to a different case with a different record does not

meet the standard of showing “likely” irreparable harm.

Even if we comb the record for support or inferences of

irreparable harm, the strongest evidence, albeit evidence not

cited by the district court, is an email from a potential

customer complaining to Marshak’s booking agent that the

customer wanted Herb Reed’s band rather than another

tribute band. This evidence, however, simply underscores

customer confusion, not irreparable harm.5

The practical effect of the district court’s conclusions,

which included no factual findings, is to reinsert the now-

rejected presumption of irreparable harm based solely on a

strong case of trademark infringement. Gone are the days

5

In assessing the evidence with respect to irreparable harm, we reject

Marshak’s assertion that the district court may rely only on admissible

evidence to support its finding of irreparable harm. Not so. Due to the

urgency of obtaining a preliminary injunction at a point when there has

been limited factual development, the rules of evidence do not apply

strictly to preliminary injunction proceedings. See Republic of the

Philippines v. Marcos, 862 F.2d 1355, 1363 (9th Cir. 1988) (“It was

within the discretion of the district court to accept . . . hearsay for purposes

of deciding whether to issue the preliminary injunction.”).

HRE V. FLORIDA ENTERTAINMENT MGMT. 21

when “[o]nce the plaintiff in an infringement action has

established a likelihood of confusion, it is ordinarily

presumed that the plaintiff will suffer irreparable harm if

injunctive relief does not issue.” Rodeo Collection, Ltd. v. W.

Seventh, 812 F.2d 1215, 1220 (9th Cir. 1987) (citing Apple

Computer, Inc. v. Formula International Inc., 725 F.2d 521,

526 (9th Cir.1984)). This approach collapses the likelihood of

success and the irreparable harm factors. Those seeking

injunctive relief must proffer evidence sufficient to establish

a likelihood of irreparable harm. As in Flexible Lifeline,

654 F.3d at 1000, the fact that the “district court made

no factual findings that would support a likelihood of

irreparable harm,” while not necessarily establishing a lack

of irreparable harm, leads us to reverse the preliminary

injunction and remand to the district court.

In light of our determination that the record fails to

support a finding of likely irreparable harm, we need not

address the balance of equities and public interest factors.

REVERSED and REMANDED.

WALLACE, Senior Circuit Judge, concurring:

I agree that the district court’s preliminary injunction

should be reversed. However, I write separately to emphasize

that we are solely reviewing a preliminary injunction, and

that we thus can express no view on issues arising after a trial

dealing with a permanent injunction. See, e.g., Barahona-

Gomez v. Reno, 167 F.3d 1228, 1234–35, 1238 (9th Cir.

1999) (stating that the court, in reviewing a preliminary

22 HRE V. FLORIDA ENTERTAINMENT MGMT.

injunction, “express[ed] no opinion on the ultimate merits of

[the] action”).