Deflecto, LLC v. Dundas*Jafine Inc.

Filing 67

ORDER entered by Judge Ortrie D. Smith denying 23 Motion for preliminary injunction. (Matthes, Renea)

IN THE UNITED STATES DISTRICT COURT FOR THE
WESTERN DISTRICT OF MISSOURI
WESTERN DIVISION
DEFLECTO, LLC,
Plaintiff,
vs.
DUNDAS *JAFINE INC.,
Defendant.

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Case No. 13-0116-CV-W-ODS

ORDER AND OPINION DENYING PLAINTIFF’S
MOTION FOR PRELIMINARY INJUNCTION
Pending before the Court is Plaintiff’s Motion for Preliminary Injunction (Doc. #
23). The Motion is denied.

I. BACKGROUND
This is a patent infringement suit. Deflecto LLC (“Deflecto”) is a manufacturer,
seller, and distributor of dryer vents and venting-related products. It owns two patents:
(1) the “Hooded Exhaust Vent,” Patent No. 5,916,023 (“the ‘023 Patent”); and (2) the
“Exhaust Vent with External Guard,” Patent No. 5,722,181 (“the ‘181 Patent”).
Defendant Dundas*Jafine Inc. (“Dundas Jafine”) also manufactures and sells dryer
vents, including the ProMax, Modified ProMax, and ProGard.
The ProGard has been sold by Dundas Jafine since 2006. Deflecto has been
aware of its existence for many years. Tr. 157:20-158:9; 159:4-8; 169:14-24. Since
April 2013, Dundas Jafine has not manufactured, sold, or offered to sell any of the
ProMax vents, as it was replaced by the Modified ProMax. Tr. 191:10-18; 234:24235:4; 12:21-25.
From April 2013 until August 2013, the Modified ProMax was shipped to Dundas
Jafine’s customers in packaging displaying photographs of the original ProMax. Tr.
145:15-22; 192:7-193:16. Dundas Jafine presented evidence that since August 2013, it

has only shipped Modified ProMax vents in packaging displaying the Modified ProMax.
Tr. 192:7-193:16. Deflecto did not counter that evidence.
Both parties compete for Home Depot’s business. Home Depot is Deflecto’s
largest customer making up the majority of its business, while Dundas Jafine has
several major customers. Tr. 130:4-12; 164:16-165:7; 191:25-192:6. At some point in
time not established in the record, Home Depot and Dundas Jafine made an agreement
for Dundas Jafine’s product line to appear in in the Northeast region—which accounts
for 400 of 1900 total Home Depot stores. Tr. 185:25-186:6. Deflecto’s dryer vent line
has thus been replaced with Dundas Jafine products in all Home Depot stores in the
Northeast. Tr. 138. Deflecto contends that pulling Deflecto’s products from the
Northeast represented a loss of 30 percent of Deflecto’s Home Depot volume. Tr.
141:10-24. Deflecto’s products are still available in stores outside of Home Depot’s
Northeast region.
Deflecto filed the instant action in February 6, 2013. On June 25, 2013, it filed its
Second Amended Complaint, which raises raises four counts. Counts I and II allege
that Dundas Jafine’s dryer vents infringe upon the ‘023 and ‘181 patents. Count III
raises a false advertising an unfair competition claim under section 43(a) of the Lanham
Act, 15 U.S.C. § 1125(a). Deflecto avers that Defendant is committing acts of unfair
competition and deceptive advertising by displaying illustrations and photos on the
Modified ProMax packaging that are inconsistent with the visual aspects of the product.
Count IV brings common law unfair competition claim.
On June 7, 2013, Deflecto filed a Motion for Preliminary Injunction seeking an
order from the Court enjoining Dundas Jafine from infringing the ‘181 and ‘023 patents.
On September 18, 2013, a hearing was held on Deflecto’s Motion. The Court will now
consider Deflecto’s Motion.

II. DISCUSSION
“A preliminary injunction is an extraordinary remedy and the burden of
establishing the propriety of an injunction is on the movant.” Watkins Inc. v. Lewis, 346
F.3d 841, 844 (8th Cir. 2003). In deciding whether to grant or deny a motion for

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preliminary injunction, the Court must balance four factors: (1) the movant’s reasonable
likelihood of success on the merits; (2) the irreparable harm the movant will suffer if
preliminary relief is not granted; (3) the balance of hardships tipping in the movant’s
favor; and (4) the impact of the injunction on the public interest. Dataphase Sys., Inc. v.
CL Sys. Inc., 640 F.2d 109, 114 (8th Cir. 1981). “Failure to show irreparable harm is an
independently sufficient ground upon which to deny a preliminary injunction.” Watkins
Inc. v. Lewis, 346 F.3d 841, 844 (8th Cir. 2003). “The basis of injunctive relief in the
federal courts has always been irreparable harm and inadequacy of legal remedies.” Id.
(quoting Bandag, Inc. Jack’s Tire & Oil, Inc., 190 F.3d 924, 926 (8th Cir. 1999). Thus, a
preliminary injunction is not appropriate when there is an adequate remedy at law. Id.;
see also Modern Computer Sys., Inc. v. Modern Banking Sys., Inc., 871 F.2s 734, 738
(8th Cir. 1989).
In this case, Deflecto has the burden to demonstrate that without injunctive relief,
it is likely that it will be injured and that such injury will not be compensable by monetary
damages if it prevails on the merits. Deflecto has not met that burden. Deflecto argues
it will be irreparably harmed absent an injunction because: (1) if Dundas Jafine
continues to manufacture its dryer vents, Deflecto will continue to lose business with
Home Depot resulting in lost sales and the layoff of additional employees; (2) Dundas
Jafine’s allegedly infringing ProMax and ProGard vents will further erode Deflecto’s
market share; and (3) Dundas Jafine’s dryer vents compete directly with Deflecto’s and
the sale of Dundas Jafine’s vents is causing price erosion.
Absent from Deflecto’s filed briefs, or arguments made during the hearing, is a
persuasive argument—or even a mention—explain why money damages would be
inadequate to compensate it for the aforementioned alleged harms. Although Deflecto
may very well believe that the alleged harm is real and significant, the facts establish
that Deflecto’s alleged harms are quantifiable. Tr. 141:16-142:2. Should Deflecto
prevail on the merits at trial, it has not established that damages, in the form of royalties
or other costs would be inadequate to compensate it for the alleged infringement.
Deflecto raises other bases for irreparable harm—none of which are persuasive.
First, it argues that it will suffer the inability to regain market share once it is lost.
Deflecto presented evidence suggesting that it may lose visibility in the market place
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and may lose more business if Home Depot gives all of its business to Dundas Jafine.
Tr. 144:10-12; 141:3-9; 153-154. However, Deflecto can only speculate that it will lose
its visibility in the market place as there is no guarantee that the loss will occur. Tr.
154:25-155:3; 165:1-7; 183:9-15. A party seeking an injunction must demonstrate a
probability, not merely a possibility, of irreparable harm in the absence of an injunction.
Winter, et. al. v. Natural Resources Defense Counsel, Inc., et al., 555 U.S. 7, 24 (2008).
Next, Deflecto argues that absent an injunction it will suffer the loss of goodwill
and reputation in the market place. This argument is without merit. Deflecto can only
speculate that it may lose more business, which may result in the loss of goodwill and
reputation in the marketplace. Further, the Court is not convinced that whether loss of
goodwill and reputation could not be addressed through money damages if Deflecto is
successful on the merits. See Novus Franchising, Inc. v. Dawson, 725 F.3d 885, 895
(8th Cir. 2013); see also Rogers Group, Inc. v. City of Fayetteville, Ark., 629 F.3d 784,
789-90 (8th Cir. 2010) (“While a district court may choose to require more than a loss of
goodwill to demonstrate irreparable harm, the district court ultimately has discretion to
determine ‘whether an alleged harm requires more substantial proof.’”).
Finally, Deflecto argues that it will suffer the inability to control its own patents
absent an injunction. One of the allegedly infringing products—the ProGard—has been
sold by Dundas Jafine since 2006. Evidence was presented at trial that Deflecto has
been aware of its existence for many years. Tr. 157:20-158:9; 159:4-8; 169:14-24. If
Deflecto’s inability to control its own patents was truly a significant harm, Deflecto would
not have waited until early 2013 to file to suit. Thus, Deflecto’s delay in bringing this
lawsuit also weighs against a finding of irreparable harm.
With regard to Deflecto’s false advertising and unfair competition claim, the Court
is not convinced that Dundas Jafine is continuing to ship the Modified ProMax to
Dundas Jafine’s customers in packaging displaying photographs of the original ProMax.
See Tr. 192:7-193:16. Plaintiff indicates it has been able to purchase the Modified
ProMax in incorrect packaging, but Plaintiff did not purchase the item from Dundas
Jafine. It may be that Dundas Jafine violated the Lanham Act in the past, but the Court
is not presently persuaded that any such violations are continuing at this time. In short,

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there is no demonstrated need for an injunction because there has been no continuing
demonstration that there is anything to be enjoined.

The Court concludes that Deflecto has failed to establish irreparable harm as it
can be fully compensated with money damages should it succeed on the merits.
Accordingly, the extraordinary remedy of issuing a preliminary injunction is not
appropriate. The Court need not address the other Dataphase factors after concluding
that Deflecto has failed to meet its burden in establishing irreparable harm. See
Watkins Inc. v. Lewis, 346 F.3d 841, 844 (8th Cir. 2003) (“Failure to show irreparable
harm is an independently sufficient ground upon which to deny a preliminary
injunction.).

III. CONCLUSION
Deflecto’s Motion for Preliminary Injunction is denied.

IT IS SO ORDERED.

/s/ Ortrie D. Smith
ORTRIE D. SMITH, SENIOR JUDGE
UNITED STATES DISTRICT COURT

DATE: October 30, 2013

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