Voice of the Arab World, Inc. v. MDTV Medical News Now, Inc.
645 F.3d 26
| 1st Cir. | 2011Background
- VOAW challenges a district court preliminary injunction enjoining VOAW from using, promoting, or selling the MDTV mark on the Internet; MDTV sought to protect its MDTV marks.
- MDTV began using MDTV in commerce in 1998; VOAW claims earlier use since 1989 and ongoing Internet use since 1995, which MDTV disputes.
- registrations: MDTV and MDTV Medical News Now registered by MDTV in 2002 and 2006 respectively; VOAW registered MDTV in 2008; priority dispute over who owns the mark.
- the district court granted a preliminary injunction in February 2010; VOAW appealed arguing improper irreparable-harm presumption and delay-based defects.
- Medical News Now had known of VOAW’s use since 2000, engaged in negotiations over the mark, and previously paid VOAW for banner referrals in 2005–2006, indicating acquiescence that undermines urgency.
- the First Circuit vacated the injunction and remanded to reevaluate under traditional equity principles in light of eBay and Winter.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the irreparable-harm presumption from likelihood of success applies. | VOAW emphasizes eBay requiring traditional equity; no automatic presumption. | MDTV relies on longstanding law permitting presumption when likelihood of success is shown. | Presumption not upheld here; the district court abused discretion by applying it given the delay. |
| Whether delay in seeking relief defeats irreparable-harm presumption. | VOAW argues delay by MDTV is not fatal to irreparable-harm presumption. | MDTV contends delay supports urgency and irreparable-harm. | Delay undermines presumption; court abused discretion by reinstating presumption after August 2009 revisions. |
| Whether the district court properly applied the four-factor test under eBay/Winter. | VOAW argues traditional equity applies; presumption not automatic. | MDTV contends eBay/Winter permit injunctive relief under the four-factor test. | Court treats eBay/Winter as governing but vacates injunction for failure to show explicit irreparable-harm finding. |
| Whether the injunction was overly broad in scope. | VOAW challenges breadth of the Internet-domain and mark-use injunction. | MDTV seeks broad protection of its mark across related Internet uses. | Remand for proper application of preliminary-injunction standards; no final ruling on breadth. |
Key Cases Cited
- eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) (injunctions governed by traditional equity principles; four-factor test)
- Winter v. Natural Resources Def. Council, Inc., 555 U.S. 7 (2008) (four-factor injunction standard; irreparable harm required)
- Amoco Production Co. v. Gambell, 480 U.S. 531 (1987) (preliminary injunction principles; equities in injunctions)
- Romero-Barcelo v. Gov. of Puerto Rico, 456 U.S. 305 (1982) (irreparable injury as basis for injunctions; equity tradition)
- Johnson-Powell v. American Bd. of Psychiatry & Neurology, Inc., 129 F.3d 1 (1st Cir. 1997) (presumption of irreparable harm in trademark context discussed)
- Bourne Co. v. Tower Records, Inc., 976 F.2d 99 (2d Cir. 1992) (acquiescence can rebut irreparable-harm presumption; new use must be qualitatively different)