# UnitedStates C ou rt o f App eals For th e First C ircuit

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.

Rob e r t 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, 2011-2- TORRUELLA, Ci rcuit Judge. In this appeal, plaintiffa p p e l l a n t V o i c e o f t h e A r a b W o r l d , I n c . ( " V O AW " ) c h a l l e n g e s the district court's interlocutory order granting defendant-appellee MDTV Medical News N ow, 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

a n d r e mand 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 r a d i o, television, satellite broadcast a n dthe 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 m e d i cal news organization and producer of the nationally b r o a dcasted television series "MDTV Medical News Now," which the parties do not dispute has aired continuously since 1998.-3-

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 fro m 1 9 8 9 through the mid1990s. Furthermore, it contends that in 1995 it began to make use of the mark in connec t i o n with its Internet website and has made continuous use ever since. Medical News Now, however, challenges
t h e s e assertions and maintains that they are contradicted by the record. First, Medical N ews Now notes that, although VOAW's federal registration of the "MDTV" mark indicates that VOAW first

use d t h e 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 re g i s tration 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 betweenBetw e en November 4, 1998 and February 1, 1999, VOAW registered 1 the following domain names: mdtv.net, mdtv.org, and mdtv.com. -4- N o v e mb e r 4, 1998 and February 1, 1999. Third, Medical News Now 1 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 b y M r . A yad -- 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 educationalVOAW also owns a Massachusetts state trademark registration for 2 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. -5- services in the field of medicine via radio, television, satellite broadcast and the Internet. The USPTO initial l yrefused VOAW's applicat ion, 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. It is unclear what the reasoning was behind 2 the USPTO's i n i t ial 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 J a n u a r y1 1 , 2 0 0 0 , M e d i c a l N e w s N o w , t h r o u g hi ts counsel, sent VOAW a cease-and-desist letter threatening to bring a trad e m ark 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-6-

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 p a r t i es, 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 regist r a tion 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 spl a s h page or first page of all promotions or advertisements tha t used the "MDTV" mark. In exchange, Medical News Now offered to, among othe r things, (1) refrain from chall e n ging 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, neverthele ss, 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 ad v e r t i s e m ent (on itsThe record is not clear as to whether this verbal agreement 3 contained any further terms regarding the use of the "MDTV" mark. -7- w e b s i t e) that would refer interested users to Medical News Now's own website. However, Medical News Now soon lost interest in the 3 banner referral -- apparently because it produced little or no traffic -- and in 2006 requested t h a t V O AWdiscontinue 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, i n August 2009, VOAW made changes to the text appearing on a t least one of its static webpages by (1) declaring a wider scope of intended services, (2) providing Internet links to certain m e dical entities, and (3) creating subdomain names. The district court found significant t h a t "the revised version of the websites deleted any limiting references to the 'Muslim and Arab world.'" Voice of t h e A r a b World, Inc., 2010 U.S. Dist. LEXIS 16981, at *8.We have jurisdiction under 28 U.S.C. § 1292(a)(1) to hear this 4 appeal from the district court's grant of a n interlocutory injunction. -8-

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 i n e x c h a n ge 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 us e a n d 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, unfai r c o mpetition and cybersquatting. In addition, on November 25, 2009, Medical News Now moved to preliminarily enjoin
V O AW f r o m u s i n g t h e " M D T V " m a r k
. O n F e b r u a r y 2 5 , 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. 4-9- 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 t h a t 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 assessin g t h e 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 8 6 4 , 8 7 5 (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. S e c o n d , 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 p r e l iminary injunctive relief, and not requiring Medical News Now to actually demonstrate such likelihood of irre p a r a b le harm. Third, VOAW contends that,-10-

even if a preliminary injunction was appr o p r iate, the district
court nevertheless abused its discretion by issuing an overly broad injunction.

VOAW's argument on the irreparable harm issue is twofold. First, VOAW maintains that presuming irreparable ha r min 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 agre e 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 p r eliminarily enjoin alleg ed trademark infringement, but declining to decide whether

s u ch 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 har m is presumed upon a finding of likelihood of success on the merits of a trademark infringement claim) is consistent with such principles, because -

- e v e n if we assumeAccordingly, it is unnecessary to address VOAW's allegations 5 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- 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 th a t s uch 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 princ i p l es 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 ( 2 0 0 8) (quoting 11A Charles Alan Wright, Arthur R. Miller & Mary Kay Kane,-12-

Federal Practice and Procedure § 2948, at 129 (2d ed. 1995) [hereinafter "Wright & Miller"]), that "is never awarded as of right." I d
. a t 6 9 0
. R a t h e r , a s t h e S u p r e m e C o u r t r e c e n tly

rea f f i rmed, "[a] plaintiff seeking a preliminary injunction must establish that he is likely to succeed on the merits, that he is likely to suffer irr e p arable 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 leg a l remedies." Weinberge r v . Romero-Barceló, 456 U.S. 305, 312 (1982); see also 11A Wright & Miller § 2948.1, a t 1 3 9 (noting that "[p]erhaps the single most important p r erequisite 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 o n l ywhere 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 t r a demark pl a i n t i f f w h o d e m o n s t r a t e s a l i k e l i h o o do f s u c c e s s o n t h e merits-13-

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, 2 2 0 (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 pat e n t i nfringement case and held that "the decision whether to grant or deny injunctive relief rests within th e e q u itable discretion of the district courts, and that such discretion must be exercised con s istent 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 neit h e r 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 sug g e s ting 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 pa t e nts" and "its lack of commercial-14-

activity in practicing the patents" was sufficient to establish that the plaintiff would suffer no irreparable harm in the absence of injun c t ive 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 rul e . . . cannot be squared with the principles of equity adopted by Congress." Id.

The Supreme Court also r e j ected 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 r u l e,' 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 t h e 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 sho u l d 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 beSection 283 of Title 35 of the United States Code provides that 6 "[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 s e c u r ed by patent, on such terms as the court deems reasonable." -15- 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, t h e Court cited Romero-Barceló, 456 U.S. at 311-13, which involved a permanent injunction i s sued 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 t o p r eliminarily 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 departur e f rom 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, the Lanham Act 6-16-

provides a court the "power to grant injunctions, according to the princip l e s 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 p r eviously 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 wit h S u preme Court precedent, which has repeat e d l y recognized that "[t]he standard for a preliminary injuncti o n i s essentially the same as for a permanent injunction with the exception that the pl a i n t i ff must show a likelihood of success on the merits rather than actual success." Amoco Prod. Co., 480 U.S. at 546 n.12, c ited with approval in Winter, 129 S. Ct. at 381.In Winter, the Supreme C o urt reaffirmed that its "frequently 7 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). The S u p r e m e C ourt has still not determined whether it is 8 consistent with traditional equitable principles for a court to presume irreparable harm once it concludes that a trademark infringement claim is likely to succ e e d on the merits. At least two courts of appeal (the Fifth and Eleventh Circuits) have questioned whether such a presumption is c o n s istent with these pr i n c i p l e s , i n l i g h t o f e B a y , b u t h a v e d e c l i n e dt o c o n c l u s i v ely 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), i t d i d 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 -17- 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. We, however, decline to address at this time the full 7 impact of eBay and W i n ter 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 presump t i on 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 a n alogous to the "general" or "categorical" rules rejected by the Supreme Court in eBay. See eBay, 547 U.S. at 393-94. Our reasons for deferring

810629(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). -18- this question are two

- f old. 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 dec i d i n g that said presumption is good law -- we still find that the distr i c t 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 f i n d i ng of likelihood of success on the merits of a trademark infringement claim "is inoperative i f 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 rel i e f a nd suggests that there is, in fact, no irreparable injury.'" Id. (quoting Citibank, N.A. v. Citytrust, 756 F.2d 273,-19-

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 de f e n dant's competing product or the plaintiff's making good faith efforts to investigate the alleged infringement." Id.

In the present case, the dist r i c t 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 irrepa r a b l e 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 eth nic/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 pr e s umption was later revived as a result of the revisions to VOAW's websites in August 2009, and was s t i l l operative when Medical News Now sought-20-

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 cer t a i n information and strongly suggesting that VOAW cease using the mark. In the following years, the parties continuousl y d isputed each other's rights over the mark. The parties engaged i n n e gotiations 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 promoti o ns and advertisements that used such mark. Significantly, during various months in 2005 and 2006, Medical News Now pa i d V O AW a f e e o f $ 6 0 0 p e r m o n t h f o r t h e r e n t o f 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 tradema r kuses (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-21-

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 belo w , t h a t M e d i c a l N e w s N o w ' s s u b s e q u e n t d e l a yi n s e e k i ng i n j u n c t i v e r e l i e f a l o n gw i t ht h e m i n i m a l l i k e l i h o o d of a quali t a t i vely new harm arising from those revisions, precludes Medical News Now from enjoying the benefit of a presumption of irreparable harm.

First, we note that t h e 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 ag a i n s t VOAW unless VOAW agreed to transfer the "mdtv" dom a i n n a m e s t o M e d i c a l N e w s N o w i n e x c h a n g e f o r a n o m inal 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 i t s multi-year delay in resolving the-22-

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 -- mai n l y , 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 suf f i c iently qualitatively different from the harm purport e d l y flowing from the prior alleged infringement, since it was reasonably foreseeable for Medical News Now that V O AW c o uld at some point revise its websites in such fashi o n . S e e 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 co u l dn ot 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-23-

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. Si g n i ficantly, 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 t h a t 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 onBecause the di strict court merely relied on a presumption of 9 irreparable harm and made no explicit f i n d ing 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 p r e s u mp t i o n , a n d w e a d o p t n o g e n e r a l o r c a t e g o r i c a l r u l e as to whether a plaintiff may demonstrate irreparable harm in these types of cases. See eBay, 547 U.S. at 393-94. -24- 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 e B a y , 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.