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Kerr Corporation v. North American Dental Wholesalers. Inc

June 9, 2011

KERR CORPORATION, PLAINTIFF(S),
v.
NORTH AMERICAN DENTAL WHOLESALERS. INC, ET AL, DEFENDANT(S).



The opinion of the court was delivered by: David O. Carter United States District Judge

ORDER DENYING PLAINTIFF'S AMENDED MOTION FOR PRELIMINARY INJUNCTION

Before the Court is Plaintiff Kerr Corporation ("Plaintiff" or "Kerr")'s Amended Motion for Preliminary Injunction (Dkt. 25) filed in the above-captioned case. The Court has reviewed the moving, opposing, and replying papers, as well as oral argument, and hereby DENIES the Motion.

I. Background

Plaintiff Kerr Corporation manufactures dental products used in restorative dental procedures. These products include composite filling materials used to fill cavities; dental cements; and dental syringes. First Amended Complaint ("FAC"), ¶ ¶ 5, 9; Amended Declaration of David Tobia ("Tobia Decl."), ¶¶ 3, 6, 8. North American Dental Wholesalers, Inc. and North American Dental, Inc. ("Defendants" or "NAD") are a dental and medical wholesale trading company. FAC, ¶ 8. Kerr asserts that it has used several trademarks for many years to label its dental products and promote them throughout the United States. Id. at ¶¶ 9-19. It claims that NAD sold six packages of Kerr consumable dental products that did not originate with Kerr and were thus unauthorized imitations of Kerr's dental products which bore Kerr's trademarks. It further argues that these products materially differed from the goods that Kerr manufactures. Id. at ¶¶ 20-1. As a result, Kerr avers that it received complaints from a few dentists who received a total of six packages of dental products that did not originate with Kerr. On December 14, 2010, Kerr allegedly contacted Defendants about the unauthorized imitations, yet NAD has allegedly not discontinued their sales nor provided Kerr with requested information regarding the imitations. Id. at ¶ 22. Kerr alleges that it has suffered, and is continuing to suffer, irreparable and substantial harm due to lost sales and a loss of goodwill. See, e.g. id. at ¶ 25.

Consequently, Plaintiff seeks (1) injunctive relief prohibiting the continued use of Plaintiff's trademarks, (2) an order demanding that Defendants recall distributed products, (3) compensatory damages, (4) statutory damages, (5) punitive damages, (6) reasonable attorneys' fees and costs, (7) an order demanding that Defendants destroy products that may infringe Plaintiff's trademarks, and (8) any other relief as the Court may deem just. Id. at Prayer for Relief.

Plaintiff initially brought its original Motion for a Preliminary Injunction in February 2011 (Dkt. 4) but voluntarily withdrew the Motion (Dkt. 24) and filed its FAC (Dkt. 23). Plaintiff then filed the present Amended Motion for a Preliminary Injunction (Dkt. 25).

II. Legal Standard

Pursuant to Rule 65 of the Federal Rules of Civil Procedure, the court may grant preliminary injunctive relief or temporary restraining orders in order to prevent "immediate and irreparable injury." Fed. R. Civ. P. 65(b)(1)(A). This equitable relief is within the discretion of the court after balancing various factors. Benda v. Grand Lodge of the Int'l Assoc. of Machinists & Aerospace Workers, 584 F.2d 308, 314 (9th Cir. 1978). Traditionally, the "criteria for granting preliminary injunctive relief are (1) a strong likelihood of success on the merits, (2) the possibility of irreparable injury to plaintiff if the preliminary relief is not granted, (3) a balance of hardships favoring the plaintiff, and (4) advancement of the public interest (in certain cases)." Dollar Rent A Car v. Travelers Indem. Co., 774 F.2d 1371, 1374 (9th Cir. 1985); see, e.g., Save Our Sonoran, Inc. v. Flowers,408 F.3d 1113, 1120 (9th Cir. 2005); Johnson v. Cal. State Bd. of Accountancy, 72 F.3d 1427, 1430 (9th Cir. 1995).

It is indisputable that a "preliminary injunction is an extraordinary and drastic remedy." Munaf v. Geren, 553 U.S. 674, 128 S.Ct. 2207, 2219 (2008). Thus, this Court will only grant an injunction if a plaintiff can make a "clear showing that [it] is entitled to such relief." Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7, 129 S.Ct. 365, 375 (2008). "[T]he decision whether to grant or deny injunctive relief rests within the equitable discretion of the district court[] and . . . such discretion must be exercised consistent with traditional principles of equity . . . ." eBay v. MercExchange, LLC, 547 U.S. 388, 394 (2006).The district court must weigh "all of the legal and equitable factors" when determining whether an injunction must issue. See Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1363 (Fed. Cir. 2008); see also Automated Merchandising Systems, Inc. v. Crane Co., 357 Fed. Appx. 297, at *3 (Fed. Cir. Dec. 16, 2009).

III. Discussion

Upon consideration of all the relevant factors described above, the Court does not find that Kerr has met its burden of establishing that the extraordinary relief of a preliminary injunction is appropriate.

A. Likelihood of Irreparable Harm

"[P]reliminary injunctive relief is available only if plaintiffs 'demonstrate that irreparable injury is likely in the absence of an injunction.'" Johnson v. Couturier, 572 F.3d 1067, 1081 (9th Cir. 2009) (quoting Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (2008) (holding that a mere possibility of irreparable injury is "too lenient")); see also Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127, 1135 (9th Cir. 2011) ("[P]laintiffs may not obtain a preliminary injunction unless they can show that irreparable harm is likely to result in the absence of the injunction."); Park Village Apartment Tenants Ass'n v. Mortimer Howard Trust, 636 F.3d 1150, 1166 (9th Cir. 2011) ("Plaintiffs must show a likelihood, not a mere possibility, of irreparable injury . . . .") (emphasis in original)*fn1 .

Kerr nonetheless demonstrates only a minimal effort to demonstrate irreparable harm, relying heavily on the idea that a plaintiff who demonstrates a likelihood of success on the merits of a trademark infringement claim is entitled to a presumption of irreparable harm. See Sun Microsystems, Inc. v. Microsoft Corp., 188 F.3d 1115, 1119 (9th Cir. 1999) (citing Cadence Design Systems v. Avant! Corp., 125 F.3d 824, 826-27 (9th Cir. 1997)). This standard, however, no longer applies in light of the Winter case and the decision of eBay Inc. v. MercExchange, L.L.C.. 547 U.S. 388 (2006). See Aurora World, Inc. v. Ty Inc., 719 F. Supp.2d 1115, 1167 (C.D. Cal.2009) (citing cases and noting that "[f]ollowing Winter, several district courts in the Ninth Circuit have found that the presumption is no longer valid" and that the eBay case was even more "pertinent").In eBay, the Supreme Court established that a plaintiff does not automatically succeed at obtaining an injunction merely by showing that infringement occurred. eBay, 547 US. Though the eBay case addressed a permanent injunction, its logic extends to the preliminary injunction stage as well. Aurora World, 719 F. Supp at 1167 (citing Hologic, Inc. v. Senorx, Inc., 2008 WL 1860035, *15 (N.D. Cal. Apr. 25, 2008)). More importantly, "[t]he eBay holding is not limited to patent cases; indeed, the Ninth Circuit has applied it in a ...


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