HRE v. Florida Entertainment Mgmt.

When seeking preliminary injunctive relief in an infringement of trademark case, a plaintiff must make sufficient showing that a likelihood of irreparable harm exists rather than rely on the presumption of irreparable harm.

The legendary vocal group, The Platters, famous for their performance of songs like “Smoke Gets In Your Eyes” and “Only You” broke up in the 1960’s. The band members and former management companies that had represented the group in its various incarnations began a series of convoluted and multi-regional litigation over the control and ownership of “The Platters” mark. In the current litigation, Herb Reed Enterprises (“HRE”) succeeded in obtaining a preliminary injunction against Florida Entertainment Management, Inc. (“FEM”) in the District of Nevada. FEM then appealed the injunction. After detailing the series of litigation surrounding the trademark and use of the mark “The Platters” the Ninth Circuit held that HRE is not relitigating issues that would have been proper in the suits brought in New York because HRE was only able to bring this claim after an escape clause, included in a settlement in related litigation from 1987, had come into affect. The panel also upheld the district court’s determination that the HRE’s claim was not foreclosed under the equitable doctrine of latches because HRE brought this claim within the applicable statute of limitation. The panel further held that Marshak failed to establish the required elements of trademark abandonment. Finally, the panel held that based upon the record, HRE failed to show sufficient evidence that HRE would likely suffer irreparable harm and because of this the panel reversed the district court’s injunction. In a concurrence, Senior Circuit Judge Wallace underscored the panel’s decision in this matter was limited to the preliminary injunction and not any further issues which may arise after trial. REVERSED and REMANDED.