Motion for rehearing denied in MDTV case

United States of America
In Voice of the Arab World v MDTV Medical News Now (Case 10-1396, May 27 2011), the US Court of Appeals for the First Circuit addressed the proper standard for a preliminary injunction in a trademark infringement case. In so doing, it considered applying the Supreme Court’s standard in eBay v MercExchange (547 US 388 (2006)), a patent case that required the party moving for injunctive relief to adhere to traditional equitable principles, requiring proof of irreparable harm.

The First Circuit did not expressly answer the central issue it raised - whether proving a likelihood of success on the merits entitles the moving party to a presumption that continued trademark infringement will cause it irreparable harm. Nonetheless, it overturned the preliminary injunction that had been granted by the district court in that case because of the movant’s delay in seeking preliminary relief (for further details please see "First Circuit prescribes eBay injunction treatment for trademark cases").
The movant, MDTV Medical News Now, requested a rehearing en banc by the First Circuit, arguing that:
  • the eBay decision has been a source of great confusion and uncertainty among the lower courts;
  • there should be a distinction between patent cases such as eBay, where the remedy of mandatory licensing is available, and trademark cases, where consumer good will can be irreparably lost; and
  • under the trademark doctrine of progressive encroachment, a trademark owner has no obligation to seek relief until the likelihood of confusion looms large.
On June 21 2011 the First Circuit denied the petition to rehear the case - but its denial did not end the debate over the proper standards for preliminary injunctions in trademark cases. If anything, its decision epitomises the uncertainty created by the eBay decision, and raises the likelihood that the Supreme Court will be obliged at some point to consider the implications of its eBay ruling in trademark cases.
James L Bikoff, David K Heasley, Liubov Ebralidze and Saskia Fikkers, Silverberg Goldman & Bikoff LLP, Washington DC

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