Voice of the Arab World, Inc. v. MDTV Medical News Now, Inc., et al

Filing

OPINION issued by Juan R. Torruella, Appellate Judge; Michael Boudin, Appellate Judge and Kermit V. Lipez, Appellate Judge. Published. [10-1396]

Case: 10-1396

Document: 00116214168

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Date Filed: 05/27/2011

Entry ID: 5553840

United States Court of Appeals
For the First Circuit
No. 10-1396
VOICE OF THE ARAB WORLD, INC.,
Plaintiff, Appellant,
v.
MDTV MEDICAL NEWS NOW, INC.,
Defendant, Appellee,
ZAGLOUL E. AYAD; MASSACHUSETTS EYE AND EAR INFIRMARY;
BOSTON EYE GROUP; NEXT STEP PROSTHETICS;
BOSTON PUBLIC HEALTH COMMISSION,
Third Party Defendants.
APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
[Hon. George A. O'Toole, U.S. District Judge]
Before
Torruella, Boudin, Lipez,
Circuit Judges.
Robert B. Foster, with whom Rackemann, Sawyer & Brewster,
P.C., was on brief for appellant.
Jeffrey H. Greger, with whom Jeffrey H. Greger, PC and Lowe
Hauptman Ham & Berner LLP, was on brief for appellee.

May 27, 2011

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TORRUELLA, Circuit Judge.

Entry ID: 5553840

In this appeal, plaintiff-

appellant Voice of the Arab World, Inc. ("VOAW") challenges the
district court's interlocutory order granting defendant-appellee
MDTV Medical News Now, Inc.'s ("Medical News Now") motion to
preliminarily enjoin VOAW from the use, sale, or promotion of the
mark "MDTV," or formative versions of that mark on the Internet, in
connection

with

medical-related

programming or services.

informational

or

educational

Because we find that the district court

abused its discretion in presuming that Medical News Now was likely
to suffer irreparable harm in the absence of preliminary injunctive
relief, we vacate the district court's preliminary injunction order
and remand the case for further proceedings consistent with this
opinion.
I.

Facts and Procedural History

VOAW is a Massachusetts non-profit corporation whose
alleged mission is to provide objective, current and accurate
healthcare

information

to

patients

and

physicians

television, satellite broadcast and the Internet.

via

radio,

It claims to

supply information to citizens of Arab and Muslim countries about
healthcare options available in the United States.
Medical News Now, on the other hand, describes itself as
a

medical

news

organization

and

producer

of

the

nationally

broadcasted television series "MDTV Medical News Now," which the
parties do not dispute has aired continuously since 1998.
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A.

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First Use of the "MDTV" Mark in Commerce
The parties agree that Medical News Now began using the

"MDTV" mark in commerce in January 1998 and has made continuous use
thereof.

However, Medical News Now disputes VOAW's assertion that

the latter has made continuous use of the "MDTV" mark in commerce
since 1989.
VOAW alleges that it first made use of the "MDTV" mark in
the production of television programs from 1989 through the mid1990s.

Furthermore, it contends that in 1995 it began to make use

of the mark in connection with its Internet website and has made
continuous use ever since.

Medical News Now, however, challenges

these assertions and maintains that they are contradicted by the
record.

First, Medical News Now notes that, although VOAW's

federal registration of the "MDTV" mark indicates that VOAW first
used the mark in commerce in 1989, a sworn declaration signed by
VOAW's President, Zagloul E. Ayad, on December 21, 1999 -- in
connection with VOAW's application for state registration of the
"MDTV" mark in Massachusetts -- establishes that VOAW's first use
of the "MDTV" mark anywhere was on March 7, 1999.

Second, Medical

News Now argues that VOAW's claim that it has been using the "MDTV"
mark on the Internet since 1995 is belied by VOAW's own assertion
that

it

registered

the

"mdtv"

Internet

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domain

names

between

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November 4, 1998 and February 1, 1999.1

Entry ID: 5553840

Third, Medical News Now

contends that the evidence in the record regarding VOAW's use of
the "MDTV" mark prior to 1998 -- which consists primarily of
certain e-mails and a declaration by Mr. Ayad -- is limited and
unconvincing.

The district court agreed with Medical News Now and

found that "evidence of any commercialization by VOAW prior to 1998
is either dubious, or worse, non-existent."

Voice of the Arab

World, Inc. v. MDTV Med. News Now, Inc., No. 09-11505-GAO, 2010
U.S. Dist. LEXIS 16981, at *9-10 (D. Mass. Feb. 25, 2010).
B.

Registration of the "MDTV" Mark
On October 9, 1998, Medical News Now filed applications

with the United States Patent and Trademark Office ("USPTO") to
register the marks "MDTV" and "MDTV Medical News Now," both in
connection with certain commercial cable television broadcast and
entertainment services. The USPTO issued registrations in favor of
Medical News Now for the "MDTV" (No. 2,655,243) and "MDTV Medical
News Now" (No. 3,081,061) marks on December 3, 2002 and April 18,
2006, respectively.

Both registrations state that the marks were

first used in commerce in January 1998.
On September 25, 2000, VOAW filed an application with the
USPTO to register the "MDTV" mark in connection with providing the
Arab and Muslim world with periodicals, information and educational

1

Between November 4, 1998 and February 1, 1999, VOAW registered
the following domain names: mdtv.net, mdtv.org, and mdtv.com.
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services in the field of medicine via radio, television, satellite
broadcast and the Internet.

The USPTO initially refused VOAW's

application, stating that Medical News Now's prior registration
stood as a barrier.

However, the USPTO later approved VOAW's

application and issued a registration (No. 3,497,465) in its favor
on September 9, 2008.2

It is unclear what the reasoning was behind

the

rejection

USPTO's

application

initial
to

register

the

and

later

"MDTV"

mark.

approval

of

VOAW's

Nevertheless,

the

district court found that Medical News Now's earlier registration
has priority.
C.

History of Delay in Seeking Injunctive Relief
On January 11, 2000, Medical News Now, through its

counsel, sent VOAW a cease-and-desist letter threatening to bring
a

trademark

infringement

action

against

VOAW

unless

certain

questions regarding the use of the "MDTV" mark were answered.

The

letter strongly urged VOAW to "select an alternative mark for [its]
services so as to avoid even the possibility of confusion" and gave
VOAW fifteen days to respond. After receiving the letter, VOAW did
not cease to use the "MDTV" mark and Medical News Now took no legal
action.

Rather, as previously mentioned, later that year -- on

2

VOAW also owns a Massachusetts state trademark registration for
the mark "MDTV." It received the state registration on January 27,
2000 for use in connection with periodicals on medical information
and distance learning in the medical field.
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September 25, 2000 -- VOAW applied for federal registration of the
"MDTV" mark.
In September 2001, Medical News Now offered to pay VOAW
$300 per month for a banner advertisement or landing page on VOAW's
website (at mdtv.com) that would direct Internet users to Medical
News Now's own website (at mdtv.now.com).

The parties, however,

were unable to reach an agreement at that time.
Subsequently, in August 2002, Medical News Now, through
its counsel, offered to enter into an agreement with VOAW whereby
VOAW would have been required to, among other things, (1) withdraw
its pending federal application for the "MDTV" mark, (2) allow
Medical News Now's pending federal application to mature into
registration and not challenge Medical News Now's rights to the
mark, and (3) use its trade name "Voice of the Arab World" on the
opening

splash

page

or

first

page

of

advertisements that used the "MDTV" mark.
News

Now

offered

to,

among

other

all

promotions

or

In exchange, Medical

things,

(1)

refrain

from

challenging VOAW's continued use under common law of the "MDTV"
mark, and (2) pay VOAW a fee of $500 per month to rent use of the
domain address "www.mdtv.com."

The parties, nevertheless, were

unable to finalize this proposed agreement.
The parties did, however, later reach a verbal agreement
in 2005 under which Medical News Now promised to pay $600 per month
to VOAW for the latter to host a banner advertisement (on its

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website) that would refer interested users to Medical News Now's
own website.3

However, Medical News Now soon lost interest in the

banner referral -- apparently because it produced little or no
traffic -- and in 2006 requested that VOAW discontinue it.

The

record shows that the parties' relationship soured further during
this time.

While VOAW attempted to collect allegedly due and

unpaid banner rental fees, Medical News Now asserted that VOAW
misleadingly induced it into renting the banner by providing false
information concerning the expected traffic.
On September 29, 2008, Medical News Now filed a petition
in the USPTO to cancel VOAW's registration (No. 3,497,465) of the
"MDTV" mark.

This proceeding is now pending before the Trademark

Trial and Appeal Board.
Subsequently, in August 2009, VOAW made changes to the
text appearing on at least one of its static webpages by (1)
declaring

a

wider

scope

of

intended

services,

(2)

providing

Internet links to certain medical entities, and (3) creating
subdomain names.

The district court found significant that "the

revised version of the websites deleted any limiting references to
the 'Muslim and Arab world.'"

Voice of the Arab World, Inc.,

2010 U.S. Dist. LEXIS 16981, at *8.

3

The record is not clear as to whether this verbal agreement
contained any further terms regarding the use of the "MDTV" mark.
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On August 14, 2009, Medical News Now sent VOAW a letter
threatening to file an action for trademark infringement and domain
name cybersquatting unless VOAW agreed to transfer the "mdtv"
domain names to Medical News Now in exchange for a nominal sum.
Thereafter, on September 10, 2009, VOAW filed an action in the
district court seeking declaratory judgment (1) that it had a right
to use and register the "MDTV" mark, and (2) that its activities
did not infringe upon Medical News Now's purported rights in the
"MDTV" mark, or constitute domain name cybersquatting.
Medical News Now responded on November 24, 2009, by
bringing counterclaims against VOAW for trademark infringement,
unfair

competition

and

cybersquatting.

In

addition,

on

November 25, 2009, Medical News Now moved to preliminarily enjoin
VOAW from using the "MDTV" mark.

On February 25, 2010, the

district court granted Medical News Now's motion and issued an
order preliminarily enjoining VOAW from the use, sale or promotion
of the "MDTV" mark or formative versions thereof on the Internet,
in

connection

programming

or

with

medical-related

services.

VOAW

information

appeals

the

or

educational

district

court's

preliminary injunction order.4

4

We have jurisdiction under 28 U.S.C. § 1292(a)(1) to hear this
appeal from the district court's grant of an interlocutory
injunction.
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II.

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Standard of Review

On appeal, we review the district court's grant of a
preliminary injunction for abuse of discretion. Boston Duck Tours,
LP v. Super Duck Tours, LLC, 531 F.3d 1, 11 (1st Cir. 2008).
"Within that framework, findings of fact are reviewed for clear
error and issues of law are reviewed de novo."

Id.

"[W]e will set

aside a district court's ruling on a preliminary injunction motion
only

if

the

court

clearly

erred

in

assessing

the

facts,

misapprehended the applicable legal principles, or otherwise is
shown to have abused its discretion."

Wine and Spirits Retailers,

Inc. v. Rhode Island, 418 F.3d 36, 46 (1st Cir. 2005).

"A material

error of law constitutes an abuse of discretion." González-Fuentes
v. Molina, 607 F.3d 864, 875 (1st Cir. 2010), cert. denied, 131
S. Ct. 1568 (2011).
III.
VOAW

challenges

Discussion
the

district

injunction order on three grounds.

court's

preliminary

First, VOAW alleges that the

district court erred in finding that Medical News Now demonstrated
a likelihood of success on the merits of its trademark infringement
claim.

Second, VOAW avers that the district court erred as a

matter of law by presuming that Medical News Now would likely
suffer irreparable harm in the absence of preliminary injunctive
relief, and not requiring Medical News Now to actually demonstrate
such likelihood of irreparable harm.
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Third, VOAW contends that,

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even if a preliminary injunction was appropriate, the district
court nevertheless abused its discretion by issuing an overly broad
injunction.
VOAW's argument on the irreparable harm issue is twofold.

First, VOAW maintains that presuming irreparable harm in

trademark infringement cases where preliminary injunctive relief is
sought is inconsistent with the Supreme Court's opinion in eBay
Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006).

Second, VOAW

contends in the alternative that, even if irreparable harm may be
presumed in certain trademark infringement cases, such presumption
cannot apply here, in light of Medical News Now's excessive delay
in seeking injunctive relief.
As

discussed

below,

we

agree

that

the

traditional

equitable principles discussed by the Supreme Court in eBay apply
in the present case.

See N. Am. Med. Corp. v. Axiom Worldwide,

Inc., 522 F.3d 1211, 1228 (11th Cir. 2008) (concluding that the
principles of eBay applied to a request to preliminarily enjoin
alleged trademark infringement, but declining to decide whether
such

principles

precluded

irreparable harm).

the

district

court

from

presuming

However, it is unnecessary to decide at this

time whether the rule relied upon by the district court (i.e.,
irreparable harm is presumed upon a finding of likelihood of
success

on

the

merits

of

a

trademark

infringement

claim)

is

consistent with such principles, because -- even if we assume

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without deciding that such rule is good law -- we still find that
the

district

court

presumption here.

abused

its

discretion

in

applying

such

a

This is due to the fact that such presumption

has been held inapplicable in cases where, as here, the plaintiff
delays excessively in seeking injunctive relief.
Accordingly, we find that the district court erred as a
matter of law in presuming irreparable harm and, thus, abused its
discretion. We, therefore, vacate the district court's preliminary
injunction order and remand the case.5
We begin our discussion by delineating the applicable
preliminary injunction standard.
to

be

confusion

in

some

In doing so, because there seems

district

courts

as

to

whether

the

principles of eBay apply to preliminary injunctions of alleged
trademark infringement, see, e.g., Operation Able of Greater Bos.,
Inc. v. Nat'l Able Network, Inc., 646 F. Supp. 2d 166, 176-77 (D.
Mass. 2009), we clarify certain aspects concerning the application
of eBay in this context.
A.

Preliminary Injunction Standard
"A

preliminary

injunction

is

an

'extraordinary

and

drastic remedy,'" Munaf v. Geren, 553 U.S. 674, 689-90 (2008)
(quoting 11A Charles Alan Wright, Arthur R. Miller & Mary Kay Kane,

5

Accordingly, it is unnecessary to address VOAW's allegations
that the district court erred in finding that Medical News Now
established a likelihood of success on the merits of its trademark
infringement claims or its contention that the preliminary
injunction was, in any event, overly broad.
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Federal Practice and Procedure § 2948, at 129 (2d ed. 1995)
[hereinafter "Wright & Miller"]), that "is never awarded as of
right."

Id. at 690.

Rather, as the Supreme Court recently

reaffirmed, "[a] plaintiff seeking a preliminary injunction must
establish that he is likely to succeed on the merits, that he is
likely to suffer irreparable harm in the absence of preliminary
relief, that the balance of equities tips in his favor, and that an
injunction is in the public interest." Winter v. Natural Res. Def.
Council, Inc., 555 U.S. 7, 129 S. Ct. 365, 374 (2008).
"The [Supreme] Court has repeatedly held that the basis
for

injunctive

irreparable

relief

injury

in

and

the
the

federal

courts

inadequacy

of

has

always

legal

been

remedies."

Weinberger v. Romero-Barceló, 456 U.S. 305, 312 (1982); see also
11A Wright & Miller § 2948.1, at 139 (noting that "[p]erhaps the
single

most

important

prerequisite

for

the

issuance

of

a

preliminary injunction is a demonstration that if it is not granted
the

applicant

is

likely

to

suffer

irreparable

decision on the merits can be rendered").

harm

before

a

Thus, "[a]n injunction

should issue only where the intervention of a court of equity is
essential in order effectually to protect property rights against
injuries otherwise irremediable." Romero-Barceló, 456 U.S. at 312
(internal quotation marks omitted).
This

circuit

has

previously

held

that

"a

trademark

plaintiff who demonstrates a likelihood of success on the merits

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creates a presumption of irreparable harm."

Entry ID: 5553840

Am. Bd. of Psychiatry

& Neurology, Inc. v. Johnson-Powell, 129 F.3d 1, 3 (1st Cir. 1997)
(citing Societe Des Produits Nestle, S.A. v. Casa Helvetia, Inc.,
982 F.2d 633, 640 (1st Cir. 1992); Keds Corp. v. Renee Int'l
Trading Corp., 888 F.2d 215, 220 (1st Cir. 1989); Camel Hair &
Cashmere Inst. of Am., Inc. v. Associated Dry Goods Corp., 799 F.2d
6, 14-15 (1st Cir. 1986)).

However, the validity of this rule has

been called into question by the Supreme Court's recent opinion in
eBay.
In

eBay,

the

Supreme

Court

reviewed

a

request

for

permanent injunction in a patent infringement case and held that
"the decision whether to grant or deny injunctive relief rests
within the equitable discretion of the district courts, and that
such discretion must be exercised consistent with traditional
principles of equity, in patent disputes no less than in other
cases governed by such standards."

547 U.S. at 394.

The Supreme

Court concluded that neither the district court nor court of
appeals fairly applied these traditional equitable principles. Id.
at 393.
Specifically, the Supreme Court noted that the district
court "appeared to adopt certain expansive principles suggesting
that injunctive relief could not issue in a broad swath of cases."
Id.

For example, the district court concluded that a "plaintiff's

willingness to license its patents" and "its lack of commercial

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activity in practicing the patents" was sufficient to establish
that the plaintiff would suffer no irreparable harm in the absence
of injunctive relief.

Id.

(internal quotation marks omitted).

The Supreme Court found that "traditional equitable principles do
not permit such broad classifications" and concluded that the
district court's adoption of a "categorical rule . . . cannot be
squared with the principles of equity adopted by Congress."

Id.

The Supreme Court also rejected the reasoning of the
court of appeals, which had reversed the district court and granted
injunctive relief.

Specifically, the Supreme Court found that the

court

had

of

appeals

improperly

"departed

in

the

opposite

direction" by establishing a "'general rule,' unique to patent
disputes, 'that a permanent injunction will issue once infringement
and validity have been adjudged[,]'" except "in the 'unusual' case,
under 'exceptional circumstances' and 'in rare instances . . . to
protect

the

public

interest.'"

Id.

at

393-94

(quoting

MercExchange, LLC v. eBay, Inc., 401 F.3d 1323, 1338-39 (Fed. Cir.
2005)) (some internal quotation marks omitted).
Although eBay dealt with the Patent Act, in the context
of a request for permanent injunctive relief, we see no principled
reason why it should not apply in the present case.

See N. Am.

Med. Corp., 522 F.3d at 1228.
First, the text and logic of eBay strongly suggest that
the

traditional

principles

of

equity

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it

discussed

should

be

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presumed to apply whenever a court must determine whether to issue
an injunction, whether the case is a patent case or any other type
of case.

In this regard, it is significant that the Court in eBay

supported its formulation of the traditional four-factor permanent
injunction standard by citing cases that were unrelated to patent
law.

Specifically, the Court cited Romero-Barceló, 456 U.S. at

311-13, which involved a permanent injunction issued after a
finding that the defendant violated the Federal Water Pollution
Control Act, and Amoco Production Co. v. Gambell, 480 U.S. 531, 542
(1987), which related to a request to preliminarily enjoin an
alleged violation of § 810 of the Alaska National Interest Lands
Conservation Act.

See eBay, 547 U.S. at 391.

The Court then

analyzed whether the traditional equitable principles set forth in
these cases applied in the patent law context and answered in the
affirmative,

noting

that

"'a

major

departure

from

the

long

tradition of equity practice should not be lightly implied,'" id.
(quoting

Romero-Barceló,

456

U.S.

at

320),

and

finding

that

"[n]othing in the Patent Act indicate[d] that Congress intended
such a departure," id. at 391-92. Similarly, nothing in the Lanham
Act indicates that Congress intended to depart from traditional
equitable principles.

Rather, like the Patent Act,6 the Lanham Act

6

Section 283 of Title 35 of the United States Code provides that
"[t]he several courts having jurisdiction of cases under this title
may grant injunctions in accordance with the principles of equity
to prevent the violation of any right secured by patent, on such
terms as the court deems reasonable."
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provides a court the "power to grant injunctions, according to the
principles of equity and upon such terms as the court may deem
reasonable,

to

prevent[,]"

among

other

things,

infringement and domain name cybersquatting.
(emphasis

added).

This

provision

equitable remedy of injunction.

trademark

15 U.S.C. § 1116(a)

codifies

the

traditional

See 3-14 Anne Gilson LaLonde,

Gilson on Trademarks § 14.02[1] (2011) ("The 'principles of equity'
mentioned

in

[15

U.S.C.

§

1116]

are

those

that

have

been

established by equity courts in many types of equity cases for
years.").
Second,

the

fact

that

eBay

dealt

with

a

permanent

injunction does not change our conclusion that its principles are
equally applicable in the context of preliminary injunctions. This
conclusion is buttressed by the logic and language of eBay, which,
as

previously

mentioned,

supported

its

formulation

of

the

traditional four-factor test by citing Amoco Production Co., a case
that involved a request for a preliminary injunction.

See eBay,

547 U.S. at 391.

Our conclusion is also consistent with Supreme

Court

which

precedent,

has

repeatedly

recognized

that

"[t]he

standard for a preliminary injunction is essentially the same as
for a permanent injunction with the exception that the plaintiff
must show a likelihood of success on the merits rather than actual
success."

Amoco Prod. Co., 480 U.S. at 546 n.12, cited with

approval in Winter, 129 S. Ct. at 381.

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Based

on

the

Page: 17

above,

we

Date Filed: 05/27/2011

conclude

that

a

Entry ID: 5553840

request

to

preliminarily enjoin alleged trademark infringement is subject to
traditional equitable principles, as set forth by the Supreme Court
in eBay, and more recently in Winter, which also discusses such
principles.7

We, however, decline to address at this time the full

impact of eBay and Winter in this area.

For example, we do not

address whether our previous rule, relied upon by the district
court,

i.e.,

"that

a

trademark

plaintiff

who

demonstrates

a

likelihood of success on the merits creates a presumption of
irreparable harm," see Johnson-Powell, 129 F.3d at 3, is consistent
with traditional equitable principles.

In other words, we decline

to decide whether the aforementioned presumption is analogous to
the "general" or "categorical" rules rejected by the Supreme Court
in eBay.8

See eBay, 547 U.S. at 393-94.

Our reasons for deferring

7

In Winter, the Supreme Court reaffirmed that its "frequently
reiterated standard requires plaintiffs seeking preliminary relief
to demonstrate that irreparable injury is likely in the absence of
an injunction." 129 S. Ct. at 375 (first emphasis added).

8

The Supreme Court has still not determined whether it is
consistent with traditional equitable principles for a court to
presume irreparable harm once it concludes that a trademark
infringement claim is likely to succeed on the merits. At least
two courts of appeal (the Fifth and Eleventh Circuits) have
questioned whether such a presumption is consistent with these
principles, in light of eBay, but have declined to conclusively
answer the question.
See Paulsson Geophysical Servs., Inc. v.
Sigmar, 529 F.3d 303, 313 (5th Cir. 2008); N. Am. Med. Corp., 522
F.3d at 1228. Furthermore, although the Ninth Circuit applied the
presumption in Marlyn Nutraceuticals, Inc. v. Mucos Pharma GmbH &
Co., 571 F.3d 873, 877 (9th Cir. 2009), it did so without
discussing the impact of eBay. In addition, district courts have
split on the issue. Compare Marks Org., Inc. v. Joles, No. 09 CV
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this question are two-fold.

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First, the parties' briefs were

inadequate on this particular issue.

Second, it is unnecessary to

decide this question here because -- even if we assume without
deciding that said presumption is good law -- we still find that
the

district

court

abused

its

discretion

in

applying

the

presumption here, in light of the fact that such presumption has
been held inapplicable in cases where the party seeking injunctive
relief excessively delays in seeking such relief.
B.

Analysis
It has been held that any presumption of irreparable harm

that may arise upon a finding of likelihood of success on the
merits of a trademark infringement claim "is inoperative if the
plaintiff has delayed either in bringing suit or in moving for
preliminary injunctive relief."

Tough Traveler, Ltd. v. Outbound

Prods., 60 F.3d 964, 968 (2d Cir. 1995).

The reasoning behind this

principle is that "the 'failure to act sooner undercuts the sense
of urgency that ordinarily accompanies a motion for preliminary
relief

and

injury.'"

suggests

that

there

is,

in

fact,

no

irreparable

Id. (quoting Citibank, N.A. v. Citytrust, 756 F.2d 273,

10629(KMW), 2011 U.S. Dist. LEXIS 28182, at *21 (S.D.N.Y. Mar. 16,
2011) (finding that "courts may not presume irreparable injury from
a showing of likelihood of success on merits" of a trademark
infringement claim), with TMX Funding, Inc. v. Impero Techs., Inc.,
No. C 10-00202 JF (PVT), 2010 U.S. Dist. LEXIS 68893, at *20 (N.D.
Cal. July 8, 2010) (finding that courts may validly presume
irreparable harm upon a showing of likelihood of success on the
merits of a trademark infringement claim).
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Case: 10-1396

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277 (2d Cir. 1985)).

Page: 19

Date Filed: 05/27/2011

Entry ID: 5553840

However, it has also been held that the

aforementioned presumption may still operate where "the delay was
caused by the plaintiff's ignorance of the defendant's competing
product or the plaintiff's making good faith efforts to investigate
the alleged infringement."

Id.

In the present case, the district court suggested that
the fact that Medical News Now knew of and acquiesced to VOAW's use
of the "MDTV" mark for almost ten years meant that, prior to August
2009 (i.e., the date of the alleged changes to VOAW's websites),
Medical News Now's claims of irreparable harm would have been
rejected.

See Voice of the Arab World, Inc., 2010 U.S. Dist. LEXIS

16981, at *10 (noting that "Medical News Now apparently would not
disagree with [the] proposition" that its claims of irreparable
harm would have been rejected if VOAW had not revised its websites
in August 2009).

However, the district court found that the

deletion from VOAW's websites (in August 2009) of the limiting
reference to a particular geographic or ethnic/cultural market,
i.e., the "Muslim and Arab World," "changed the calculus."
*8, *10.

Id. at

Thus, although the district court suggested that any

presumption of irreparable harm had become inoperative prior to
August 2009, the court found that such presumption was later
revived as a result of the revisions to VOAW's websites in August
2009,

and

was

still

operative

when

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Medical

News

Now

sought

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Document: 00116214168

Page: 20

Date Filed: 05/27/2011

injunctive relief on November 25, 2009.

Entry ID: 5553840

See id. at *11-*12.

We

disagree.
Medical News Now has known of VOAW's allegedly infringing
use of the "MDTV" mark since at least January 2000, when it sent
VOAW

a

letter

requesting

certain

information

and

strongly

suggesting that VOAW cease using the mark. In the following years,
the parties continuously disputed each other's rights over the
mark.

The parties engaged in negotiations on various occasions,

including in August 2002, at which time Medical News Now offered
to, among other things, refrain from challenging VOAW's continued
use

under

common

law

of

the

"MDTV"

mark

and,

in

exchange,

requested, among other things, that VOAW withdraw its pending
application for federal registration of the mark and agree to use
its trade name "Voice of the Arab World" as a limiting reference on
all

promotions

and

advertisements

that

used

such

mark.

Significantly, during various months in 2005 and 2006, Medical News
Now paid VOAW a fee of $600 per month for the rent of a banner
advertisement on VOAW's website.

Therefore, Medical News Now was

well aware of VOAW's use of the "MDTV" mark and cannot claim that
the nearly ten-year delay between the time that it purportedly
first became aware of VOAW's allegedly infringing trademark uses
(i.e.,

January

2000)

and

when

it

finally

sought

preliminary

injunctive relief (i.e., November 25, 2009) was due to good faith
investigation efforts. Neither can Medical News Now attribute such

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Entry ID: 5553840

delay merely to its attempts at reaching a settlement with VOAW,
since the record does not show significant negotiations after 2006.
Accordingly, we find that Medical News Now's business dealings with
VOAW (particularly, the banner rental in 2005 and 2006), combined
with its delay in seeking injunctive relief, indicate acquiescence.
Furthermore, assuming without deciding that the district
court was correct in finding that the August 2009 revisions to
VOAW's websites "at least theoretically increased" the likelihood
of confusion in the U.S. market, see Voice of the Arab World, Inc.,
2010 U.S. Dist. LEXIS 16981, at *10, we find, as further explained
below,

that

injunctive

Medical
relief

News

along

Now's
with

subsequent

the

minimal

delay

in

seeking

likelihood

of

a

qualitatively new harm arising from those revisions, precludes
Medical News Now from enjoying the benefit of a presumption of
irreparable harm.
First, we note that the revisions to VOAW's websites
occurred in August 2009.

On August 15, 2009, Medical News Now sent

VOAW a letter noting these changes and threatening to take legal
action against VOAW unless VOAW agreed to transfer the "mdtv"
domain names to Medical News Now in exchange for a nominal sum.
Yet,

it

is

significant

that

Medical

News

Now

did

not

seek

preliminary injunctive relief until November 25, 2009, and only did
so after VOAW first sued for declaratory judgment on September 10,
2009.

Consistent with its multi-year delay in resolving the

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underlying disagreement, Medical News Now's leisurely pace and lack
of urgency undercut a presumption of irreparable harm.
Second, assuming without deciding that Medical News Now
was

at

one

point

entitled

to

benefit

from

a

presumption

of

irreparable harm, we disagree with the district court that the
August 2009 revisions to VOAW's websites -- mainly, deleting the
limiting reference to the "Muslim and Arab world" -- justify a
renewal of such presumption.

See Bourne Co. v. Tower Records,

Inc., 976 F.2d 99, 102 (2d Cir. 1992) (interpreting Citibank, 756
F.2d 273, as holding that "acquiescence in an infringement rebuts
the presumption of irreparable harm where the allegedly 'new' use
does not inflict harm qualitatively different from the harm flowing
from the prior infringement"). The harm allegedly flowing from the
August 2009 changes was not sufficiently qualitatively different
from

the

harm

purportedly

flowing

from

the

prior

alleged

infringement, since it was reasonably foreseeable for Medical News
Now that VOAW could at some point revise its websites in such
fashion.

See id. (noting that, in order for the presumption of

irreparable harm to be revived, "the perceived harm from the new
use must be so qualitatively different from the harm flowing from
the

prior

reasonably

uncontested
foresee

the

use
new

that

the

harm").

injured
This

party

could

foreseeability

not
is

evidenced by the fact that, back in August 2002, Medical News Now
requested that VOAW use its trade name "Voice of the Arab world" as

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Date Filed: 05/27/2011

Entry ID: 5553840

a limiting reference whenever VOAW used the "MDTV" mark.

VOAW

refused to comply with this request and never agreed to include any
limiting references while using the mark.

Significantly, VOAW's

federal registration for the "MDTV" word mark, which was approved
on September 9, 2008, does not require that VOAW's use of said word
mark on the Internet be accompanied by a limiting reference to the
"Muslim and Arab world."

It appears that this reality influenced

Medical News Now's decision to file a petition in September 29,
2008 before the USPTO to cancel VOAW's registration.
News

Now

did

not

seek

preliminary

injunctive

Yet, Medical
relief

until

November 25, 2009.
In sum, assuming without deciding that a court may
presume irreparable harm upon a finding of likelihood of success on
the merits of a trademark infringement claim and that Medical News
Now was at one point entitled to benefit from such a presumption,
the presumption was inoperative as of August 2009 and was not
renewed by the revisions to VOAW's websites.
Based on the above, we conclude that the district court
abused its discretion by improperly presuming that, in the absence
of preliminary injunctive relief, Medical News Now would suffer
irreparable harm before a decision on the merits could be rendered,
and ordering such relief without making an explicit finding on

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Case: 10-1396

Document: 00116214168

whether

Medical

News

Page: 24

Now

had

Date Filed: 05/27/2011

demonstrated

a

Entry ID: 5553840

likelihood

of

irreparable harm.9
IV.

Conclusion

For the reasons stated, although we decline to decide at
this time whether a court may shift the burden of proof by allowing
a trademark plaintiff to benefit from a presumption of irreparable
harm upon a finding of likelihood of success on the merits -- in
light of the Supreme Courts' opinions in eBay, 547 U.S. 388, and
more recently in Winter, 555 U.S. 7 -- we do conclude that the
district

court

erred

as

a

matter

of

law

by

presumption here and, thus, abused its discretion.

applying

such

We, therefore,

vacate the district court's preliminary injunction order and remand
the case for a proper consideration of the preliminary injunction
standard, consistent with this opinion.
Vacated and Remanded for further proceedings consistent
with this opinion.

Each side shall bear its own costs on this

appeal.

9

Because the district court merely relied on a presumption of
irreparable harm and made no explicit finding on whether Medical
News Now demonstrated that, absent preliminary injunctive relief,
it would likely suffer irreparable harm before a decision on the
merits is rendered, we issue no opinion on this ultimate question.
Rather, we only hold that Medical News Now cannot benefit from such
a presumption, and we adopt no general or categorical rule as to
whether a plaintiff may demonstrate irreparable harm in these types
of cases. See eBay, 547 U.S. at 393-94.
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