310 F. Supp. 3d 949
E.D. Ill.2018Background
- Redbox and DVDXpress operate DVD-rental kiosks; Redbox uses REDBOX word mark and distinctive red kiosk color and owns registered trademarks for both.
- Redbox learned in early 2016 that DVDXpress used all-red kiosks and ran comparative ads saying customers could rent certain DVDs “28 days before ... Redbox.”
- Redbox sent a cease-and-desist letter on April 10, 2017 and filed suit on July 31, 2017 alleging trademark/trade dress infringement and false advertising under the Lanham Act; it sought a preliminary injunction prohibiting more red kiosks and the 28-day comparative ads and requesting corrective advertising.
- DVDXpress contended Redbox unreasonably delayed seeking injunctive relief; the court had earlier struck some of DVDXpress’s affirmative defenses but not a laches defense.
- The court focused on whether Redbox demonstrated likelihood of success and irreparable harm, noting Seventh Circuit precedent that delay can rebut the presumption of irreparable harm in trademark/false-advertising cases.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Redbox is entitled to a preliminary injunction on trademark/trade dress infringement | Redbox argued DVDXpress’s all-red kiosks infringe its registered marks and trade dress and warrant immediate injunctive relief | DVDXpress argued Redbox unreasonably delayed seeking injunctive relief, defeating the presumption of irreparable harm | Denied: court found an unexplained ~18‑month delay and internal Redbox communications concluding no infringement undermined irreparable-harm showing |
| Whether Redbox is entitled to a preliminary injunction on false advertising (28‑day claim) | Redbox argued DVDs identified were available at Redbox within 28 days, so DVDXpress’s comparative ads were false and injunction/corrective advertising is needed | DVDXpress argued Redbox waited too long to challenge the comparative advertising, negating irreparable harm | Denied: court concluded Redbox knew of the unchanged comparative slogan in early 2016; its delay (even if measured from a 2017 letter) defeated irreparable-harm showing |
| Whether delay/laches analysis requires showing defendant prejudice to deny preliminary relief | Redbox suggested delay did not defeat irreparable harm absent defendant prejudice | DVDXpress relied on authority that delay can rebut irreparable-harm presumption without laches showing | Held: court rejected conflating laches and irreparable-harm standards; delay alone can rebut presumption of irreparable harm for preliminary relief |
| Whether preliminary relief is appropriate given company conduct and internal communications | Redbox argued relief needed for ongoing harm; pointed to more recent ads and kiosks | DVDXpress pointed to Redbox CEO email and prior company inquiries concluding no infringement | Held: internal email and prior company conclusions undermined urgency; court refused to "manufacture a sense of urgency" and denied the injunction |
Key Cases Cited
- Promatek Indus. v. Equitrac Corp., 300 F.3d 808 (7th Cir. 2002) (standard for preliminary injunctions in trademark cases)
- Abbott Labs. v. Mead Johnson & Co., 971 F.2d 6 (7th Cir. 1992) (preliminary-injunction prerequisites and irreparable-harm presumption in trademark/false-advertising suits)
- Ty, Inc. v. Jones Grp., Inc., 237 F.3d 891 (7th Cir. 2001) (delay can rebut presumption of irreparable harm in trademark case)
- Citibank, N.A. v. Citytrust, 756 F.2d 273 (2d Cir. 1985) (significant delay undercuts irreparable-harm presumption)
- Winter v. Natural Resources Defense Council, 555 U.S. 7 (2008) (preliminary injunction is an extraordinary remedy requiring clear showing of likely success and irreparable harm)
- Tom Doherty Assocs., Inc. v. Saban Entm't, Inc., 60 F.3d 27 (2d Cir. 1995) (knowledge of alleged infringement and company conclusion that rights weren’t violated undermine claims of urgency)
- Graham v. Medical Mutual of Ohio, 130 F.3d 293 (7th Cir. 1997) (denial of preliminary injunction where irreparable harm not shown)