Herb Reed v. Florida Entertainment: eBay Comes for the Trademark Injunction

Herb Reed Enterprises, LLC v. Florida Entertainment Management, Inc., No. 12-16868, 736 F.3d 1239 (9th Cir. 2013), decided December 2, 2013, is the decision that carried the Supreme Court’s injunction jurisprudence into trademark law. Building on eBay Inc. v. MercExchange and Winter v. Natural Resources Defense Council, the Ninth Circuit held that a trademark plaintiff seeking a preliminary injunction must affirmatively demonstrate a likelihood of irreparable harm — it does not flow automatically from a showing of likely success on the merits. The case is the leading authority for the proposition that the traditional, presumption-driven approach to trademark injunctions did not survive eBay.

At a glance

• Case: Herb Reed Enterprises, LLC v. Florida Entertainment Management, Inc., No. 12-16868, 736 F.3d 1239 (9th Cir. 2013)
• Decided: December 2, 2013; on appeal from the U.S. District Court for the District of Nevada (No. 2:12-cv-00560)
• Holding: A plaintiff seeking a preliminary injunction in a trademark case must establish a likelihood of irreparable harm; the former presumption arising from likely success on the merits is no longer valid after eBay and Winter
• Disposition: Preliminary injunction vacated and case remanded; the district court had relied on insufficient findings of irreparable harm
• Subsequent history: The Supreme Court denied certiorari (2014)

The Platters, and a long-running dispute over a name

The mark at issue was “The Platters,” the name of the storied mid-century vocal group. Herb Reed was one of the group’s original members, and his entity, Herb Reed Enterprises, claimed rights in the name; Larry Marshak and the defendants used “The Platters” in connection with a touring vocal group. Reed’s company sued for trademark infringement and sought to enjoin the defendants from using the mark in connection with any vocal group. The district court in Nevada granted a preliminary injunction, finding that the plaintiff had shown a likelihood of success on the merits, a likelihood of irreparable harm, a balance of hardships in its favor, and that an injunction served the public interest.

The Ninth Circuit affirmed the district court’s likelihood-of-success analysis but reversed on irreparable harm — and in doing so announced a rule with consequences far beyond this one band’s name.

From presumption to proof

For decades, courts in trademark cases treated irreparable harm as something close to automatic: once a plaintiff showed a likelihood of confusion and thus a likelihood of success, irreparable harm to goodwill and reputation was presumed, and a preliminary injunction typically followed. That practice rested on the intuition that injury to a mark’s goodwill is inherently hard to quantify and therefore inherently irreparable.

The Supreme Court unsettled that intuition. In eBay (2006), a patent case, the Court rejected categorical rules favoring injunctions and insisted that the traditional four-factor equity test be applied on the facts of each case. In Winter (2008), the Court emphasized that a preliminary-injunction plaintiff must demonstrate that irreparable harm is likely — not merely possible. Lower courts quickly extended eBay’s logic to copyright, but its application to trademark remained inconsistent.

Herb Reed closed that gap for the Ninth Circuit. The court held that eBay and Winter foreclosed any presumption of irreparable harm in the trademark context. “Likelihood of irreparable harm,” the court explained, must be established, not presumed, by the plaintiff. Goodwill injury may well be irreparable in a given case — but the plaintiff must prove that it is likely, with evidence, rather than invoking a doctrinal shortcut.

Why the record failed

Having articulated the standard, the Ninth Circuit measured the district court’s findings against it and found them wanting. The lower court’s irreparable-harm analysis rested on conclusory reasoning — for example, that the plaintiff would suffer loss of control over its business reputation, and that there might be damage to goodwill and the potential for loss of customers. The Ninth Circuit characterized this as “grounded in platitudes rather than evidence.” Statements that simply describe the kind of harm trademark plaintiffs typically assert do not, without more, establish that such harm is likely on the particular record.

The court underscored that evidence of likely irreparable harm must connect to the facts: actual or probable loss of control over reputation, demonstrable consumer confusion translating into reputational injury, or similar proof. Because the district court had not made findings that satisfied the now-clarified standard, the Ninth Circuit vacated the injunction and remanded. The remedy — extraordinary equitable relief — could not rest on assumptions about the nature of trademark harm in the abstract.

Open questions

Herb Reed clarified the standard but left the harder evidentiary questions to be worked out case by case. Chief among them is what, concretely, suffices to prove likely irreparable harm: how much evidence of lost control over reputation, of consumer confusion, or of goodwill erosion a plaintiff must marshal at the preliminary stage, when discovery is incomplete and time is short. A second open question is the treatment of the Ninth Circuit’s “sliding scale” — the serious-questions formulation that allows a lesser showing on the merits when the balance of hardships tips sharply — and how, if at all, the no-presumption rule interacts with it. A third is the relationship between this evidentiary burden and the eventual statutory landscape: in 2020, Congress amended the Lanham Act (15 U.S.C. § 1116(a)) to create a rebuttable presumption of irreparable harm upon a finding of infringement, a development that recalibrates, but does not erase, the evidentiary discipline Herb Reed demanded.

Implications

• No automatic injunction. A finding of likely confusion no longer carries irreparable harm along with it; the plaintiff must prove harm as a distinct element of the preliminary-injunction analysis.
• Build an evidentiary record. Declarations reciting generic “loss of goodwill” language are insufficient; plaintiffs need concrete proof — lost control over reputation, evidence of confusion, customer defection, or comparable showings.
• Defendants have a real foothold. Even a strong likelihood-of-success showing can fail to produce an injunction if the harm record is thin, giving defendants a meaningful avenue to resist preliminary relief.
• The 2020 Trademark Modernization Act changes the baseline. Congress’s later amendment to § 1116(a) restored a rebuttable presumption of irreparable harm upon a finding of infringement or likely success; Herb Reed’s insistence on evidence still informs how that presumption is rebutted and applied.
• Speed plus proof. Because preliminary injunctions move fast, counsel should assemble harm evidence early rather than relying on doctrine to fill the gap.

Frequently asked questions

What did Herb Reed actually change? It held that, after eBay and Winter, a trademark plaintiff seeking a preliminary injunction must prove a likelihood of irreparable harm rather than relying on a presumption that arose automatically from a likelihood of success on the merits.

Does this mean trademark plaintiffs can no longer get injunctions? No. Injunctions remain available — but the plaintiff must support the irreparable-harm element with evidence rather than conclusory assertions. Herb Reed raised the proof bar; it did not close the courthouse door.

How does the 2020 Trademark Modernization Act affect this? Congress amended 15 U.S.C. § 1116(a) to provide a rebuttable presumption of irreparable harm upon a finding of infringement (or likelihood of success at the preliminary stage). That presumption softens Herb Reed’s practical effect, but it is rebuttable, so evidence about the actual likelihood of harm remains central.

Authorities and sources

• Herb Reed Enterprises, LLC v. Florida Entertainment Management, Inc., No. 12-16868, 736 F.3d 1239 (9th Cir. Dec. 2, 2013), opinion: FindLaw and slip opinion (Berkeley Law).
• Case brief and summary: Quimbee.
• Practitioner analysis: Loeb & Loeb LLP and Jones Day (surveying the post-eBay circuit split on the presumption of irreparable harm).