American Board v. Johnson-Powell ( 1997 )


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    UNITED STATES COURT OF APPEALS
    FOR THE FIRST CIRCUIT

    ________

    No. 97-1289

    AMERICAN BOARD OF PSYCHIATRY AND NEUROLOGY, INC.,

    Plaintiff, Appellant,

    v.

    GLORIA JOHNSON-POWELL, M.D.,

    Defendant, Appellee.

    ____________________

    APPEAL FROM THE UNITED STATES DISTRICT COURT

    FOR THE DISTRICT OF MASSACHUSETTS

    [Hon. George A. O'Toole, Jr. U.S. District Judge] ___________________

    ____________________

    Before

    Stahl, Circuit Judge, _____________

    Campbell and Bownes, Senior Circuit Judges. _____________________


    ____________________

    Roibin J. Ryan with whom Christopher B. Sullivan, Kirkland & ________________ ________________________ __________
    Ellis, Richard S. Nicholson, and Cooke, Clancy & Gruenthal, L.L.P., _____ _____________________ ___________________________________
    were on brief for appellant.
    Alice E. Richmond, with whom Ann Pauly and Richmond, Pauly & Ault _________________ _________ ______________________
    LLP, were on brief for appellee. ___

    ____________________

    OCTOBER 23, 1997
    ____________________


















    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 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."


    ____________________

    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


    ____________________

    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 ___ __________________________________________ __________

    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. ___



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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, ___ ___________________ ____________________

    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. ________________________

    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 __________


    ____________________

    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. __________

    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 __________


    ____________________

    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 __________

    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. _______ ___________________

    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 __________

    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 ___________

    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 _________________________________

    at 640. Certainly a court should grant an interlocutory


    ____________________

    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 __________
    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 _____

    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 __________

    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 __________

    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 _____

    the ground that there was no prospect of future infringement.

    2. Findings of fact. ________________

    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 _________________ ________




    ____________________

    6. In Camel Hair, the district court found "there was a ___________
    probability that further marketing of [the infringing
    product] would occur if an injunction was not issued." Camel _____
    Hair, 799 F.2d at 9; see also Keds Corp., 888 F.2d at 217 ____ ___ ____ __________
    (noting that defendant had refused to stop selling its
    remaining inventory of the infringing product); Donoghue v. ________
    IBC/USA (Publications), Inc., 886 F. Supp. 947, 953 (D. ______________________________
    Mass.), aff'd, 70 F.3d 206 (1st Cir. 1995) (noting that _____
    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 _____ ____
    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 _____________

    ABPN reads Pic Design out of context. __________

    In Pic Design, we limited an earlier statement in __________

    Electronics Corp. of Am. v. Honeywell, Inc., 428 F.2d 191 _________________________ ________________

    (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 ______ ___ ___

    Design, we modified our statement in Honeywell so that ______ _________

    voluntary reform will always suffice to prevent injunctive ___________________________

    relief only if it is "irrefutably demonstrated, total

    reform." Pic Design, 436 F.2d at 809. It does not follow, __________

    however, that a district court may, in its discretion, credit

    a claim of reform only if it meets the Pic Design standard. __________

    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 __________

    infringer and the infringer's rapid and credible cessation of

    its infringing activities. See Camel Hair, 799 F.2d at 13. ___ __________

    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 ___________

    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 ___ __________

    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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