American Bd. of Psychiatry and Neurology, Inc. v. Johnson-Powell

• Decision Date: 04 September 1997
• Docket Number: No. 97-1289,M,JOHNSON-POWEL,97-1289
• Citation: 129 F.3d 1
• Parties: AMERICAN BOARD OF PSYCHIATRY AND NEUROLOGY, INC., Plaintiff, Appellant, v. GloriaD., Defendant, Appellee. . Heard
• Court: U.S. Court of Appeals — First Circuit

Page 1

129 F.3d 1

44 U.S.P.Q.2d 1517

AMERICAN BOARD OF PSYCHIATRY AND NEUROLOGY, INC., Plaintiff, Appellant, v. Gloria JOHNSON-POWELL, M.D., Defendant, Appellee.

No. 97-1289.

United States Court of Appeals First Circuit.

Heard Sept. 4, 1997.

Decided Oct. 23, 1997.

Roibin J. Ryan with whom Christopher B. Sullivan, Kirkland & Ellis, Chicago, IL, Richard S. Nicholson, and Cooke, Clancy & Gruenthal, L.L.P., Boston, MA, were on brief for appellant.

Alice E. Richmond, with whom Ann Pauly and Richmond, Pauly & Ault LLP, Boston, MA, were on brief for appellee.

Before STAHL, Circuit Judge, CAMPBELL and BOWNES, Senior Circuit Judges.

LEVIN H. CAMPBELL, Senior Circuit Judge.

Plaintiff American 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 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." 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 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 injunction only if the district court abused its discretion. See Camel Hair & Cashmere Inst. of Am., Inc. v. Associated Dry Goods Corp., 799 F.2d 6, 12-13 (1st Cir.1986) (citing Planned Parenthood League of Mass. v. Bellotti, 641 F.2d 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 district court abuses its discretion if it incorrectly applies the law to particular facts. Id. We review findings of fact made as part of the district court's denial of injunctive relief under a clearly erroneous standard. See Keds Corp. v. Renee Int'l Trading Corp., 888 F.2d 215, 222 (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 Celebrity, Inc. v. Trina, Inc., 264 F.2d 956, 958 (1st Cir.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 registrant may obtain an injunction to preserve the value of its mark and to prevent future infringement. See 15 U.S.C. §§ 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, 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 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.

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 Helvetia, Inc., 982 F.2d 633, 640 (1st Cir.1992); Keds Corp, 888 F.2d at 220; Camel Hair, 799 F.2d at 14-15. We have declared in cases such as this one, involving literally false statements, that "only a slight likelihood of injury need be shown to warrant injunctive relief." Camel Hair, 799 F.2d at 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.

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 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 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 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 Properties, Inc., 48 F.3d 618, 620 (1st Cir.1995); Acierno v. New Castle County, 40 F.3d 645, 647 (3d Cir.1994). Absent likelihood...