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

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
 TORRUELLA, Circuit Judge. 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 informational or educational

programming or services. 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 via radio,

television, satellite broadcast and the Internet. 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. 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 mid-

1990s. 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 domain names between

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November 4, 1998 and February 1, 1999.1 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 USPTO's initial rejection and later approval of VOAW's

application to register the "MDTV" mark. 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 all promotions or

advertisements that used the "MDTV" mark. In exchange, Medical

News Now offered to, among other 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 with medical-related information or educational

programming or services. VOAW appeals the 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. 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. Discussion

VOAW challenges the district court's preliminary

injunction order on three grounds. 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. 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 two-

fold. 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 the district court from presuming

irreparable harm). 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

-10-
without deciding that such rule is good law -- we still find that

the district court abused its discretion in applying such a

presumption here. 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. In doing so, because there seems

to be confusion in some 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.

-11-
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 relief in the federal courts has always been

irreparable injury and the inadequacy of legal 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 harm before a

decision on the merits can be rendered"). 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." 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

-13-
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 of appeals had 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 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, trademark

infringement and domain name cybersquatting. 15 U.S.C. § 1116(a)

(emphasis added). This provision codifies the traditional

equitable remedy of injunction. 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 precedent, which 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 above, we conclude that a 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. 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 suggests that there is, in fact, no irreparable

injury.'" 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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277 (2d Cir. 1985)). 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." Id. at

*8, *10. 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 Medical News Now sought

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injunctive relief on November 25, 2009. 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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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 Medical News Now's subsequent delay in seeking

injunctive relief along with the minimal 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 uncontested use that the injured party could not

reasonably foresee the new harm"). This foreseeability 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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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. Yet, Medical

News Now did not seek preliminary injunctive 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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whether Medical News Now had demonstrated a 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 applying such

presumption here and, thus, abused its discretion. 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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