Halo Optical Products, Inc. v. Liberty Sport, Inc.
6:14-cv-00282
N.D.N.Y.Jul 23, 2014Background
- Halo sued Liberty for trademark infringement and breach of contract in the Northern District of New York (2014).
- Court previously granted a preliminary injunction prohibiting Liberty from REC SPECS and related eyewear actions during litigation.
- Liberty moved to modify the injunction to require Halo to post security (bond) under Rule 65(c).
- Liberty seeks a bond to cover markups Halo charges for inspection-related costs (~$820,780).
- Court denied Liberty’s motion, finding no likelihood of harm without a bond and that Halo need not post bond.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Should Halo be ordered to post security under Rule 65(c)? | Liberty argues Halo must post bond to cover potential losses. | Halo contends no bond is necessary given lack of demonstrated harm after breach concerns. | Bond not required; Liberty’s motion denied. |
| Is a bond warranted to cover alleged markup payments during the suit? | Halo’s bonding would compensate Liberty for ongoing markups. | No risk of harm without bond since Liberty paid markups for years and breach found likely. | No bond needed; security not warranted. |
Key Cases Cited
- Nokia Corp. v. InterDigital, Inc., 645 F.3d 553 (2d Cir. 2011) (bond purpose to secure enjoined party’s recovery of damages)
- Eastman Kodak Co. v. Collins Ink Corp., 821 F. Supp. 2d 582 (W.D.N.Y. 2011) (court may dispense with bond where no likelihood of harm)
- Doctor's Assocs. v. Stuart, 85 F.3d 975 (2d Cir. 1996) (district court has wide discretion on security)
- Rex Medical L.P. v. Angiotech Pharmaceuticals (US), Inc., 754 F. Supp. 2d 616 (S.D.N.Y. 2010) (damages from enforcing contractual obligations not cognizable harm)
- Corning Inc. v. PicVue Electronics, Ltd., 365 F.3d 156 (2d Cir. 2004) (illustrates bond considerations under Rule 65(c))