American Board v. Johnson-Powell

• Court: Court of Appeals for the First Circuit
• Decided: October 23, 1997
• Docket: 97-1289
• Status: Published

Opinion

USCA1 Opinion

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.



                                         -2-



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


-3-



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.
                                                             ___



                                         -4-



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.
                                                            ___


-5-



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


-6-



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.



                                         -7-



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.



                                         -8-



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."  



                                         -10-



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
                                        __________


-11-



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.  



                                         -12-



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


-13-



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.


-14-



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." 


-15-



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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