Herb Reed Enterprises, LLC v. Florida Entertainment Management, Inc.
736 F.3d 1239
| 9th Cir. | 2013Background
- The Platters formed in 1953 with Herb Reed as a founder; other original members are Robi, Lynch, Taylor, and Williams.
- Post-breakup, members performed under derivations of The Platters; ownership disputes over the mark circulated through multiple jurisdictions.
- FPI, Buck Ram’s company, held rights to The Platters via 1956 contracts, with members assigning rights in exchange for stock.
- Settlement history includes an 1987 Florida stipulation between Reed and FPI; the 'escape clause' preserved Reed’s rights if a final order invalidated FPI’s rights.
- Nevada proceedings (2011 default judgment) declared FPI had no right to The Platters, triggering the escape clause; subsequent actions questioned the clause’s scope.
- HRE sued Marshak in 2012 in Nevada for trademark infringement seeking a preliminary injunction against use of The Platters mark; district court granted the injunction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is HRE precluded by res judicata? | Res judicata does not apply; Nevada ruling altered rights independent of NY injunction. | Earlier NY injunction and settlements bind the parties and bar later claims? | Res judicata does not apply to bar HRE's claims. |
| Did laches bar HRE's action? | Delay was within a three-year analogous period; no prejudice shown. | Laches should apply due to delay since 2011 events. | Laches does not bar the action. |
| Has HRE established likelihood of success on the merits? | HRE owns a valid mark or rights and Marshak uses a confusingly similar mark. | Marshak argues Reed abandoned the mark; abandonment must be strictly proven. | HRE has established likelihood of success on the merits. |
| Is there likelihood of irreparable harm to HRE? | Infringement risks reputational harm and goodwill; monetary relief insufficient. | Lack of concrete evidence of irreparable harm after eBay/Winter changes. | Record fails to show likely irreparable harm. |
Key Cases Cited
- Brookfield Communications, Inc. v. West Coast Entm't Corp., 174 F.3d 1036 (9th Cir. 1999) (irreparable harm not presumed; apply four-factor test)
- eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (U.S. 2006) (irreparable harm required; four-factor test applies)
- Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (U.S. 2008) (irreparable harm must be likely for preliminary injunction)
- Amoco Prod. Co. v. Village of Gambell, 480 U.S. 531 (U.S. 1987) (preliminary injunction standard akin to permanent injunction standard)
- Flexible Lifeline Sys. v. Precision Lift, Inc., 654 F.3d 989 (9th Cir. 2011) (applies irreparable harm requirement in injunctions)
- Reno Air Racing Ass’n, Inc. v. McCord, 452 F.3d 1126 (9th Cir. 2006) (irreparable harm evaluation in injunctions)
- Stuhlbarg Int’l Sales Co., Inc. v. John D. Brush & Co., Inc., 240 F.3d 832 (9th Cir. 2001) (evidence of loss of goodwill supports irreparable harm)
- Apple Computer, Inc. v. Formula International Inc., 725 F.2d 521 (9th Cir. 1984) (probative use and confusion factors in mark infringement)
- AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (factors for confusing similarity)
- Grocery Outlet, Inc. v. Albertson's, Inc., 497 F.3d 949 (9th Cir. 2007) (ownership and likelihood of confusion standards for infringement)