Church of Scientology Intern. v. Elmira Mission
| Decision Date | 01 August 1985 |
| Docket Number | No. CIV-85-412T.,CIV-85-412T. |
| Citation | 614 F. Supp. 500 |
| Parties | CHURCH OF SCIENTOLOGY INTERNATIONAL, a corporation; Religious Technology Center, a corporation; and Scientology Missions International, a corporation, Plaintiffs, v. The ELMIRA MISSION OF the CHURCH OF SCIENTOLOGY, a corporation, a/k/a Church of Scientology, Mission of Elmira, a/k/a Dianetics Center, a/k/a Scientology Elmira, a/k/a Center for Creative Learning; Harry Palmer, an individual; and Avra Honey-Smith, an individual, Defendants. |
| Court | U.S. District Court — Western District of New York |
Harris, Beach, Wilcox, Rubin & Levey, Rochester, N.Y. (Kevin J. Arquit, Rochester, N.Y., of counsel), for plaintiffs.
Weidman & Jordan, Rochester, N.Y. (Mark S. Nunn, Rochester, N.Y., of counsel), for defendants.
For over a decade, defendant Harry Palmer has been the operator and President of the Elmira Mission of the Church of Scientology. The Elmira Mission operated for many years with the blessings of the highest church officials until 1984, when the Elmira Chapter ceased paying its regular tithes to the mother church in California, Scientology Missions International. Within a few months, Mr. Palmer was notified by the Religious Technology Center (which purports to be the owner and protector of the trademarks associated with the religion of Scientology) that he had violated the obligations of his license agreement. After the parties failed in attempts at private dispute resolution, including arbitration, the Church of Scientology International brought the matter to this Court.
According to the complaint, the Elmira Mission of the Church of Scientology is presently using the "Scientology" trade-name and marks without the authorization of the church organization, and is therefore infringing plaintiffs' rights under the Federal Trademark Act of 1946.1 Consequently, plaintiffs now move this Court for a preliminary injunction to restrain defendants from further infringement during the pendency of this lawsuit. For the reasons set forth below, that request must be denied.
"Perhaps the single most important pre-requisite for the issuance of a preliminary injunction is a demonstration that if it is not granted the applicant is likely to suffer irreparable harm before a decision on the merits can be rendered." Citibank, N.A. v. Citytrust, 756 F.2d 273, 275 (2d Cir.1985) (quoting 11 Wright and Miller, Federal Practice and Procedure, Section 2948, at 431 (1973)). Plaintiffs have made no serious attempt to explain with evidentiary detail how that requirement might be satisfied under the particular facts of this case. Rather, plaintiffs have placed their primary reliance on the argument that the elements of "irreparable harm" are established in a trademark action simply by a showing of the likelihood of plaintiff's success on the merits. Plaintiffs apparently take the position that they must be entitled to a preliminary injunction if they succeed in demonstrating a likelihood of success on their trademark claim, since such a showing would entail, as a matter of law, a conclusive and irrebuttable presumption of possible irreparable injury. Although the defendants have never contested that position, I draw a contrary conclusion from my reading of the applicable case law.
When a plaintiff seeks a preliminary injunction for violations of trademark or copyright law, it is now well settled in this Circuit that "allegations of irreparable injury need not be very detailed", because normally such injury can be presumed from infringement. Wainwright Securities, Inc. v. Wall Street Transcript Corporation, 558 F.2d 91, 94 (2d Cir.1977) (copyright), cert. denied, 434 U.S. 1014, 98 S.Ct. 730, 54 L.Ed.2d 759 (1978). Due to the unique role played by a trademark in commerce, and the difficulties in measuring the value of the goodwill that it represents, there is a virtually insurmountable presumption that irreparable harm is at least possible (if not likely) where infringement is not enjoined. Consequently, when a plaintiff establishes a likelihood of success in a trademark infringement action, by demonstrating that defendant's use of a mark is likely to cause confusion or mistake, the courts in this Circuit will almost routinely find the possibility of irreparable harm and grant preliminary injunctive relief.
In P. Daussa Corp. v. Sutton Cosmetics (P.R.) Inc., 462 F.2d 134, 136 (2d Cir.1972), the Court of Appeals announced that, "in trademark cases, confusing similarity between marks is sufficient injury to warrant the issuance of a preliminary injunction". Reasoning that "an injunction will issue" when an infringing mark is likely to cause confusion, the Second Circuit held that the District Court Judge below had abused her discretion in denying a preliminary injunction on the ground that the plaintiff had failed to show the necessary "irreparable injury". Id. Accord, Consumers Union of United States, Inc. v. General Signal Corp., 724 F.2d 1044, 1052 (2d Cir.1983) (), cert. denied, ___ U.S. ___, 105 S.Ct. 100, 83 L.Ed.2d 45 (1984); Coca-Cola Company v. Tropicana Products, Inc., 690 F.2d 312, 317 (2d Cir.1982) (); Matter of Vuitton et Fils S.A., 606 F.2d 1, 4 (2d Cir.1979) (); American Home Products Corporation v. Johnson Chemical Company, Inc., 589 F.2d 103, 106 (2d Cir.1978).
In reliance on these and similar pronouncements, many District Courts in this Circuit have held that the requisite showing of possible irreparable injury follows as a matter of course where there is a likelihood of consumer confusion. Tavaro S.A. v. Jolson, 591 F.Supp. 846, 853-54 (S.D.N. Y.1984); Camp Beverly Hills, Inc. v. Camp Central Park, Inc., 217 U.S.P.Q. 783, 785 (S.D.N.Y.1982); Cuisinarts, Inc. v. Robot-Coupe International Corp., 509 F.Supp. 1036, 1044-45 (S.D.N.Y.1981); Lacoste Alligator S.A. v. F. Saltstein, Inc., 216 U.S.P.Q. 985 (S.D.N.Y.1981).
In a pair of recent trademark decisions, however, the Second Circuit Court of Appeals has now made it clear that it will demand a slightly more discriminating analysis of the requirements for a preliminary injunction. See Citibank, N.A. v. Citytrust, 756 F.2d 273 (2d Cir.1985) and Bell & Howell: Mamiya Company v. Masel Supply Company Corp., 719 F.2d 42 (2d Cir.1983). In both cases, the District Courts below had found that the plaintiffs had satisfied their burden of demonstrating a likelihood of confusion. Consequently, in keeping with what had become the customary practice within this Circuit, both District Courts granted preliminary injunctions against continued infringement without any extended discussion or explicit findings with respect to irreparable harm. In both cases, however, the Court of Appeals vacated the preliminary injunction as an abuse of discretion, on the grounds that the District Court had failed to adequately consider whether there was a sufficient factual foundation for any presumption of possible irreparable harm. Without deciding whether the plaintiffs were likely to prevail on the question of trademark infringement, the Second Circuit decided in both cases that the type of "confusion" found by the District Court did not support an inference of possible irreparable injury.2
Accordingly, although the inference of possible irreparable harm is nearly inexorable when a likelihood of confusion is established, that presumption may be rebutted. Citibank, supra, 756 F.2d at 276; Dow Jones and Company, Inc. v. Board of Trade of the City of Chicago, 546 F.Supp. 113, 117 (S.D.N.Y.1982) (copyright). As Chief Judge Henry J. Friendly observed, in defining the standard for preliminary injunctive relief against trademark infringement: "Where there is, then, such high probability of confusion, injury irreparable in the sense that it may not be fully compensable in damages almost inevitably follows." Omega Importing Corp. v. Petri-Kine Camera Company, 451 F.2d 1190, 1195 (2d Cir.1971) (emphasis added). This conclusion is compelled by the fundamental principles of equity jurisprudence, since a rigid and irrebuttable presumption of irreparable harm would violate the well-established maxim that "equitable relief must, by its very nature, be tailored to the facts of a particular dispute". Joseph Scott Company v. Scott Swimming Pools, Inc., 764 F.2d 62, 63 (2d Cir.1985). The Second Circuit has repeatedly observed that suits demanding injunctive relief against trademark infringement require a "comprehensive analysis of all the relevant facts and circumstances", Vitarroz v. Borden, Inc., 644 F.2d 960, 968 (2d Cir.1981), since "each trademark infringement case presents its own unique set of facts". Thompsom Medical Co., Inc. v. Pfizer, Inc., 753 F.2d 208, 214 (2d Cir.1985).
For the foregoing reasons, I hold that a plaintiff who demonstrates a likelihood of success in a trademark infringement action will "almost inevitably" be entitled to a presumption of possible irreparable injury adequate to sustain the granting of a preliminary injunction, but that inference must always remain open to rebuttal. Consequently, before granting a preliminary injunction against trademark infringement, a Federal Judge must first be satisfied that the reasoning traditionally underlying the ordinary presumption of "irreparable harm" is consistent with the unique facts and circumstances of the particular case. This duty exists even where, as here, the party opposing the injunction has made no serious attempt to...
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Church of Scientology Intern. v. Elmira Mission of Church of Scientology
...LUMBARD, CARDAMONE and WINTER, Circuit Judges. CARDAMONE, Circuit Judge: This appeal is from a denial of a preliminary injunction. 614 F.Supp. 500. Appellants, who had licensed appellees to use their registered trademarks, later terminated the appellees' authority. When the former licensees......