USCA1 Opinion
UNITED STATES COURT OF APPEALS
FOR THE FIRST CIRCUIT
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No. 97-1289
AMERICAN BOARD OF PSYCHIATRY AND NEUROLOGY, INC.,
Plaintiff, Appellant,
v.
GLORIA JOHNSON-POWELL, M.D.,
Defendant, Appellee.
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APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
[Hon. George A. O'Toole, Jr. U.S. District Judge]
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Before
Stahl, Circuit Judge,
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Campbell and Bownes, Senior Circuit Judges.
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Roibin J. Ryan with whom Christopher B. Sullivan, Kirkland &
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Ellis, Richard S. Nicholson, and Cooke, Clancy & Gruenthal, L.L.P.,
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were on brief for appellant.
Alice E. Richmond, with whom Ann Pauly and Richmond, Pauly & Ault
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LLP, were on brief for appellee.
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OCTOBER 23, 1997
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CAMPBELL, Senior Circuit Judge. Plaintiff American
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Board of Psychiatry and Neurology, Inc. ("ABPN") appeals from
the district court's denial of a preliminary injunction to
order Dr. Gloria Johnson-Powell to desist from infringing its
certification mark. ABPN had alleged in its complaint that
Dr. Johnson-Powell had falsely claimed, both under oath and
on her curriculum vitae, that she was ABPN-certified, in
violation of the Trademark Act of 1946, 15 U.S.C.
1114(1)(a)-(b) (the "Lanham Act"). While seemingly in
agreement that Dr. Johnson-Powell had, in fact, committed
such infringements, the court denied relief because it
believed she was unlikely to infringe in the future. ABPN
asserts on appeal that the district court erred in refusing
to grant a the preliminary injunction. While the case is
close, we cannot say that the district court acted beyond its
discretion; hence we affirm.
I. BACKGROUND
The facts are largely undisputed. ABPN is a non-
profit Illinois corporation that certifies psychiatrists and
neurologists as specialists qualified in their respective
fields.1 ABPN secured and owns a federal registration for
the mark: "The American Board of Psychiatry and Neurology."
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1. ABPN certification is optional and is distinct from state
licensure.
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ABPN authorizes physicians to use its mark if they have met
ABPN's requirements and received an ABPN certificate or
license to use the mark.
Dr. Johnson-Powell is a prominent physician and
psychiatrist who has often testified as an expert witness in
court. Although Dr. Johnson-Powell is not certified by the
ABPN, she claimed under oath on several occasions that she
was ABPN-certified. Dr. Johnson-Powell first made such
statements at a deposition and during trial testimony in
1991. In 1993, after Dr. Johnson-Powell said she was ABPN-
certified in a deposition, a lawyer challenged her
certification status at trial. She proclaimed ignorance of
whether she was actually certified. In 1995 she again
misstated her status at a deposition and during trial
testimony. In addition to her sworn testimony, Dr. Johnson-
Powell also distributed a resume on which she claimed to be
certified and even included a purported certification number.
ABPN first learned of Dr. Johnson-Powell's
assertions in November of 1995. ABPN wrote to her, inquiring
about her actions. She replied that a clerical error had
caused the inadvertent inclusion of a certification number on
her resume and that she had remedied the error.
ABPN brought this suit for certification mark
infringement on December 17, 1996 in the United States
District Court for the District of Massachusetts. On
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December 30, the court granted a temporary restraining order
ex parte against Dr. Johnson-Powell. On January 23 and 24,
1997, both parties attended a preliminary injunction hearing.
ABPN presented documentary evidence and testimony; Dr.
Johnson-Powell, who did not personally appear, tendered her
affidavit promising not to repeat her infringing conduct and
attaching a redacted resume that did not include a reference
to ABPN certification. She also asserted that she has not
seen patients nor provided expert witness services since
1995.
Upon completion of the hearing, the district court
denied ABPN's request for a preliminary injunction. The
court reasoned that, although ABPN demonstrated a strong
likelihood that it would prevail on the merits, it had failed
to demonstrate a sufficient likelihood of irreparable harm in
the near future. ABPN brings this interlocutory appeal from
the district court's order denying its request for a
preliminary injunction.2
II. STANDARD OF REVIEW
In trademark actions as in others, courts of appeal
will reverse a district court's denial of a preliminary
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2. Our appellate jurisdiction rests upon 28 U.S.C.
1292(a)(1), which provides for appeals from "[i]nterlocutory
orders of the district courts . . . granting, continuing,
modifying, refusing or dissolving injunctions." Id.
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injunction only if the district court abused its discretion.
See Camel Hair & Cashmere Inst. of Am., Inc. v. Associated
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Dry Goods Corp., 799 F.2d 6, 12-13 (1st Cir. 1986) (citing
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Planned Parenthood League of Mass. v. Bellotti, 641 F.2d
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1006, 1009 (1st Cir. 1981)). Application of an improper
legal standard, however, is never within a district court's
discretion. See Camel Hair, 799 F.2d at 13. Similarly, a
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district court abuses its discretion if it incorrectly
applies the law to particular facts. Id. We review findings
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of fact made as part of the district court's denial of
injunctive relief under a clearly erroneous standard. See
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Keds Corp. v. Renee Int'l Trading Corp., 888 F.2d 215, 222
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(1st Cir. 1989). Absent clear error or other abuse of
discretion, we will not reverse a district court's denial of
an injunction merely because we would have been inclined to
grant the injunction had we heard the matter ourselves. See
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Celebrity, Inc. v. Trina, Inc., 264 F.2d 956, 958 (1st Cir.
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1959).
III. DISCUSSION
As noted, ABPN has registered its certification
mark. A registered certification mark receives the same
protection as a trademark. See 15 U.S.C. 1054. A
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registrant may obtain an injunction to preserve the value of
its mark and to prevent future infringement. See 15 U.S.C.
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1114, 1116. Here, ABPN sought a preliminary injunction to
protect its mark in the interim before the district court
could finally resolve ABPN's claims for damages and permanent
injunctive relief.
We have stated that a district court, when
determining whether to issue a preliminary injunction in a
trademark action, should weigh four factors: (i) the
plaintiff's likelihood of success on the merits; (ii) whether
the plaintiff risks suffering irreparable harm if the
injunction is not granted; (iii) whether such injury
outweighs the harm that injunctive relief would cause for the
defendant; and (iv) whether the public interest would be
adversely affected by granting or denying an injunction.
See Equine Techs., Inc. v. Equitechnology, Inc., 68 F.3d 542,
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544 (1st Cir. 1995). Here, in denying relief, the district
court mentioned two of these four factors in remarks made
from the bench. It indicated that it found a strong
likelihood of success on the merits by noting that: "[t]he
indications are very strong that there has been an
infringement in the past[,] so strong as to be perhaps
undeniable." Nevertheless, in denying a preliminary
injunction it said it "[did] not think that there has been a
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showing that there is likely irreputable [sic] harm in the
future."3
ABPN asserts that the district court erred in two
respects. First, it contends that the district court abused
its discretion by relying upon an incorrect legal standard to
determine whether ABPN would suffer irreparable harm without
a preliminary injunction. Second, ABPN asserts that the
court clearly erred when it found that Dr. Johnson-Powell was
not likely to infringe ABPN's mark in the near future.
1. Incorrect Legal Standard.
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To support its argument that the district court
used an incorrect legal standard to assess the likelihood of
irreparable harm, ABPN relies on cases in which we have held
that a trademark plaintiff who demonstrates a likelihood of
success on the merits creates a presumption of irreparable
harm. See, e.g., Societe des Produits Nestle, S.A. v. Casa
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Helvetia, Inc., 982 F.2d 633, 640 (1st Cir. 1992); Keds Corp,
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888 F.2d at 220; Camel Hair, 799 F.2d at 14-15. We have
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declared in cases such as this one, involving literally false
statements, that "only a slight likelihood of injury need be
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shown to warrant injunctive relief." Camel Hair, 799 F.2d at
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3. The court did not expressly balance the relief afforded
by the injunction against the harm to the defendant; however,
it said that it did not "rest the denial of the preliminary
injunction on an assessment of Dr. Johnson-Powell's likely
reaction." It made no mention of the impact of the
injunction on the public interest.
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15 (emphasis added). Reducing the standard of proof for
irreparable harm in trademark actions reflects the intent of
43(a) of the Lanham Act, 15 U.S.C. 1125(a), "to encourage
commercial companies to act as the fabled 'vicarious avenger'
of consumer rights." Camel Hair, 799 F.2d at 15.
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ABPN argues that the district court abused its
discretion by requiring it to demonstrate "likely"
irreparable harm and imminent infringement. We agree with
the district court, however, that, while certification mark
and trademark infringements may be presumed without more to
cause irreparable harm, there is no parallel presumption that
because such infringements have occurred in the past, they
will inevitably be continued into the future.4 Rather,
plaintiff retained the ordinary burden of showing a
sufficient likelihood that the infringing conduct would occur
in the future so as to give rise to an enjoinable threat of
irreparable harm.
Here, the court determined that there was "no
prospect that there would be [future] occasions of
infringement." It is clear from Camel Hair itself that the
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4. In saying this, we do not question that previous
infringing conduct will ordinarily imply often very
strongly the likelihood of continued future violations,
and thus may well be persuasive evidence of threatened
irreparable harm. We say merely that such evidence does not
amount to a legal presumption; it is proof that, like other
factual evidence, may be rebutted by other facts and
circumstances.
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court made no legal error in considering whether or not the
evidence as a whole indicated a threat of continued
infringement. One of the Camel Hair defendants who had
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previously sold infringing garments removed them from its
racks prior to the preliminary injunction hearing. Against
that defendant, we upheld the district court's denial of an
interlocutory injunction, stating that "there was no
likelihood of [that particular defendant] causing any injury
to [the plaintiff] at the time the request for an injunction
was being considered." Camel Hair, 799 F.2d at 13. The
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purpose of interlocutory injunctive relief is to preserve the
status quo pending final relief and to prevent irreparable
injury to the plaintiff not simply to punish past misdeeds
or set an example. See CMM Cable Rep., Inc. v. Ocean Coast
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Properties, Inc., 48 F.3d 618, 620 (1st Cir. 1995);
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Acierno v. New Castle County, 40 F.3d 645, 647 (3d Cir.
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1995). Absent likelihood of future infringement, there can
be none of the ill effects that an injunction seeks to
prevent: no loss of future profits, no loss of goodwill or
reputation. Thus, contrary to ABPN's suggestion, the
district court's inquiry into the question of future
irreparable injury was proper.
ABPN contends that Camel Hair commands courts to
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grant a preliminary injunction in a trademark action if the
plaintiff demonstrates even a "slight likelihood" of
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irreparable injury. The district court's use of "likely" is
said to have signaled use of too high a standard of proof
here.5 But while even a "slight likelihood" of future
infringement may well warrant injunctive relief, we cannot
say that a district judge's discretion to withhold an
injunction turns here on such nuances of phraseology. The
"slight likelihood" standard was discussed in Camel Hair in
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reference to whether the act of infringement would itself
create irreparable harm, not to whether there was a
likelihood of infringement in the future. As we have said
elsewhere, "[b]y its very nature, trademark infringement
results in irreparable harm because the attendant loss of
profits, goodwill, and reputation cannot be satisfactorily
quantified, and, thus, the trademark owner cannot adequately
be compensated." Societe Des Produits Nestle, S.A., 982 F.2d
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at 640. Certainly a court should grant an interlocutory
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5. At one point the court stated that "harm isn't presumed
if it's not certain or if it's certain that they won't occur
or not certain that they won't occur." Presumably, the judge
meant that he found little likelihood that Dr. Johnson-Powell
would infringe in the near future. This reading is
buttressed by the fact that, in the same breath, the judge
analogized this matter to Camel Hair by noting that in both
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cases there was "no prospect that there would be [future]
occasions of infringement from the defendant."
The judge also noted, however, that he did not "think
there [was] a showing that [the infringing] behavior [was]
likely to continue," and stated that the general requirements
of equity demand that a plaintiff "show the likelihood they
are about to suffer some irreparable harm." He also found
that the relevant question for the court was "whether the
harm is likely to occur or not."
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injunction in a trademark case when a realistic risk of
future infringement (within the time covered by the
injunction) has been demonstrated, but we cannot say the
district court misunderstood this point.
To be sure, there was ample evidence here of past
infringing conduct, not to mention conduct indicative of bad
faith. As mentioned in note 4, supra, such evidence, if not
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rebutted, may give rise to a strong inference that further
infringing acts will occur in the future. Even so, we cannot
say that a defendant can never take actions and provide
assurances sufficient, in the face of such evidence, to
convince a court that she will not commit future violations.
Our system leaves it primarily in the hands of the district
court to ascertain whether the danger of future harm has been
adequately established so as to warrant the protection of an
injunction. In arguing for a rule that, in a situation like
this, injunctive relief is necessarily required as a matter
of law, ABPN points to our language in Camel Hair that "the
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district court's finding that it was probable that
defendant's labels were literally false in itself warranted
the grant of the injunction sought." Camel Hair, 799 F.2d at
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16. But in that aspect of Camel Hair, it is clear that the
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district judge found, and that we accepted, that infringing
conduct would continue unless enjoined.6
We, therefore, reject ABPN's argument that the
court committed legal error in denying injunctive relief on
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the ground that there was no prospect of future infringement.
2. Findings of fact.
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ABPN's more potent argument is that, even if the
court used a permissible legal standard to assess irreparable
harm, the district court clearly erred in its factual finding
thatDr. Johnson-Powell would not infringe in the near future.
ABPN argues that the court below should not have
credited Dr. Johnson-Powell's claim of voluntary reformation7
because her conduct did not rise to the level of "irrefutably
demonstrated, total reform." Pic Design Corp. v. Bearings
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6. In Camel Hair, the district court found "there was a
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probability that further marketing of [the infringing
product] would occur if an injunction was not issued." Camel
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Hair, 799 F.2d at 9; see also Keds Corp., 888 F.2d at 217
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(noting that defendant had refused to stop selling its
remaining inventory of the infringing product); Donoghue v.
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IBC/USA (Publications), Inc., 886 F. Supp. 947, 953 (D.
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Mass.), aff'd, 70 F.3d 206 (1st Cir. 1995) (noting that
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defendant continued its infringing activity).
7. Dr. Johnson-Powell filed an affidavit, in which she
asserted, inter alia, that: (1) she has not seen patients
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since 1995; (2) she has not circulated her infringing resume
since 1995; (3) the false claim on her resume was
inadvertent; (4) she tried to locate and destroy all copies
of her misleading resume; (5) she has not served as an expert
witness, nor assisted an expert witness, since 1995; and (6)
she will not claim to be Board certified in the future.
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Specialty Co., 436 F.2d 804, 809 (1st Cir. 1971). We think
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ABPN reads Pic Design out of context.
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In Pic Design, we limited an earlier statement in
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Electronics Corp. of Am. v. Honeywell, Inc., 428 F.2d 191
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(1st Cir. 1970). In that earlier case, we stated in dicta
that "[w]e might accept the principle that so far as a
preliminary injunction is concerned, . . . voluntary reform
will always suffice." Id. at 195 (emphasis added). In Pic
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Design, we modified our statement in Honeywell so that
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voluntary reform will always suffice to prevent injunctive
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relief only if it is "irrefutably demonstrated, total
reform." Pic Design, 436 F.2d at 809. It does not follow,
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however, that a district court may, in its discretion, credit
a claim of reform only if it meets the Pic Design standard.
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Our affirmance of an injunction in that case demonstrated
only that a court does not necessarily abuse its discretion
by granting an injunction when the nonmoving party has
voluntarily abated its infringing activity. Whether a court
goes too far in denying an injunction in the absence of
something less than total reform is a fact-specific matter.
ABPN argues that the record contains insufficient
evidence for a court to conclude that Dr. Johnson-Powell
would not engage in infringing conduct in the near future.
As ABPN correctly notes, our decision to affirm the district
court's denial of injunctive relief against one of the
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defendants in Camel Hair rested upon the good faith of the
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infringer and the infringer's rapid and credible cessation of
its infringing activities. See Camel Hair, 799 F.2d at 13.
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ABPN argues that Dr. Johnson-Powell has not displayed similar
good faith and that she is extremely likely to infringe
again.
We must agree that the evidence of past
infringement is very strong. The district court itself
remarked that the evidence of Dr. Johnson-Powell's past
infringement was "so strong as to be perhaps undeniable."
The district court also thought her affidavit was "probably
not true," apparently in respect to the claimed "inadvertence
of the error on the resume." It can also be inferred from
the record that Dr. Johnson-Powell violated past promises to
reform her conduct. Moreover, Dr. Johnson-Powell did not
proffer her affidavit until after the court had entered a
temporary restraining order, timing argued by ABPN to suggest
a lack of sincerity. Clearly, Dr. Johnson-Powell's behavior
does not rise to the level of reformation displayed by the
defendant in Camel Hair; on this record, the court could
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undoubtedly have issued preliminary injunctive relief had it
been so inclined. Our review, however, is for clear error
and for abuse of discretion. See Keds Corp., 888 F.2d at
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222. We cannot say these standards were reached here.
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Despite its skepticism about some aspects of Dr.
Johnson-Powell's affidavit, the district court plausibly
found that the character of Dr. Johnson-Powell's past
misstatements rendered the possibility of recurring
infringement remote. Serving as a courtroom expert and
disseminating a resume, Dr. Johnson-Powell's two methods of
infringement, are "not like someone offering goods for sale,"
which could occur at any time. In support of the court's
determination was Dr. Johnson-Powell's affidavit of January
8, 1997, filed with the court by her attorneys and signed
under penalty of perjury, in which she stated that, in the
future, she has "no intention to and will not represent
[herself] as being certified by The American Board of
Psychiatry and Neurology and will not engage in any
unauthorized use of the registered certification mark of The
American Board of Psychiatry and Neurology." She also
indicated that she no longer engages in the business of
testifying as an expert witness. Along with the affidavit
was a copy of her curriculum vitae which no longer contained
her claim of certification. Her attorneys, moreover, offered
to stipulate in writing that, "from this date forward, Gloria
Johnson-Powell will not represent herself as being certified
by [ABPN] and will not engage in any unauthorized use of the
registered certification mark."
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The district court retains jurisdiction over this
matter pending final determination of the action brought by
ABPN. Dr. Johnson-Powell and her attorneys are
unquestionably aware that any violation during that period
would constitute a serious breach of faith with the court and
would erode any hopes defendant may continue to have for a
successful outcome. ABPN, moreover, will still be able to
request final injunctive relief. District courts are better
positioned than ourselves to observe the nuances of these
matters. Viewing all the evidence available to the district
court and the posture of this appeal through the deferential
lens of the applicable standard of review, we cannot say that
the district court clearly erred or otherwise abused its
discretion in concluding that the defendant will not further
infringe ABPN's mark in the future period during which a
preliminary injunction would operate.
Affirmed.
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