Ninth Circuit Eliminates Presumption of Irreparable Harm for Trademark Owners Seeking a Preliminary Injunction - Herb Reed Enterprises LLC v. Florida Entertainment Management Inc

by McDermott Will & Emery

In yet another chapter in the epic saga regarding use of the musical group name “The Platters,” the U.S. Court of Appeals for Ninth Circuit overturned precedent by finding that irreparable harm must be proven in trademark cases when a party seeks injunctive relief even if the party establishes a likelihood of success on the merits. Herb Reed Enterprises LLC v. Florida Entertainment Management Inc., Case No. 12-16868 (9th Cir., Dec. 2, 2013) (McKeown, J.) (Wallace, J. concurring).

Herb Reed Enterprises (HRE) is the management company of one of the founders of The Platters, a very successful musical group established in 1953. It ultimately broke up in the 1960s as the original members left one by one. But in the decades since, the original members—each of whom has continued to perform under some derivation of the band name—along with their current and former managers have bitterly fought over ownership of “The Platters” trademark in more than half a dozen lawsuits. Some of them have resulted in agreements or judgments allowing the parties to use the name in conjunction with another (e.g., Herb Reed and the Platters).

Defendant Larry Marshak and his company Florida Entertainment Management claim rights to the name via an agreement with an entity associated with the band’s original management company. The validity of that company’s rights has been the subject of many prior lawsuits. HRE’s present suit is based on Marshak’s use of “The Platters” name when marketing a tribute band. Marshak appealed. After the district court granted HRE a preliminary injunction. Marshak appealed.

After finding that HRE’s suit was not barred by res judicata or laches, the 9th Circuit addressed whether HRE satisfied the four elements required for a preliminary injunction. A party seeking a preliminary injunction 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.

Under 9th Circuit precedent, irreparable harm was generally presumed in a trademark infringement case once a likelihood of success on the merits was shown. Here, the court overturned that presumption by citing the heightened injunction standards set forth in the Supreme Court’s decisions in eBay Inc. v. MercExchange LLC (2006) and Winter v. Natural Resources Defense Council (2008). In eBay, the Supreme Court held that an injunction should not be automatically issued based on a finding of patent infringement. In Winter, the Supreme Court held that a plaintiff seeking a preliminary injunction must demonstrate that irreparable injury is likely—not merely a “possibility”—in the absence of an injunction.

Ultimately, even though the 9th Circuit panel affirmed the district court’s finding that HRE proved a likelihood of success on the merit, it reversed the preliminary injunction because “the district court’s analysis of irreparable harm is cursory and conclusory, rather than being grounded in any evidence or showing by HRE.”

Practice Note: District courts will now require plaintiffs seeking a preliminary injunction to provide detailed evidence of specific injury to reputation or goodwill because “unsupported and conclusory statements regarding harm” are insufficient to survive appellate scrutiny.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© McDermott Will & Emery | Attorney Advertising

Written by:

McDermott Will & Emery

McDermott Will & Emery on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.