Traditionally, a plaintiff seeking a preliminary injunction in a trademark infringement case has been entitled to a presumption of irreparable harm if the plaintiff can prove likelihood of success on the merits.
In 2006, the Supreme Court decided eBay, Inc. v. MercExchange, L.L.C. The Court there rejected a categorical rule that a patent infringement plaintiff is entitled to a permanent injunction if it proves infringement. Instead, held the Court, even a patent infringement plaintiff must show
(1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.
The question became the extent to which a presumption of irreparable harm survives eBay (1) in the preliminary injunction context, and (2) when other intellectual property rights are at issue.
By now, there is authority for the proposition that the presumption of irreparable harm is dead in both patent infringement cases, see Automated Merch. Sys. v. Crane Co.; Robert Bosch LLC v. Pylon Mfg. Corp., and copyright infringement cases, see Flexible Lifeline Sys. v. Precision Lift; Apple, Inc. v. Psystar Corp., whether in preliminary or permanent injunction proceedings.
But there also is authority that the presumption survives — or at least, may survive — in trademark infringement cases. See Perfect 10, Inc. v. Google, Inc.; Marlyn Nutraceuticals v. Mucos Pharma GmbH & Co.; Quicksilver, Inc. v. Kymsta Corp.
As has been noted, the Federal Circuit’s decision this week in Robert Bosch confirmed the presumption’s death in the patent/permanent injunction context. But as the court also observed, “Although eBay abolishes our general rule that an injunction normally will issue when a patent is found to have been valid and infringed, it does not swing the pendulum in the opposite direction.” The Federal Circuit urged that courts not “entirely ignore the fundamental nature of patents as property rights granting the owner the right to exclude,” and that eBay “does not mean that the nature of patent rights has no place in the appropriate equitable analysis.”
In trademark infringement cases, the presumption of irreparable harm exists for a reason: Reputation and goodwill are fragile. Though a patent case, Robert Bosch may be a signal that the eBay pendulum’s swing has reached peak amplitude, and that in trademark cases, the presumption will survive.