In the

United States Court of Appeals

For the Seventh Circuit

No. 01-1444

SIMON PROPERTY GROUP, L.P.,

a Delaware limited partnership,

Plaintiff-Appellant,

v.

mySIMON, INC., a California

corporation,

Defendant-Appellee.

Appeal from the United States District Court

for the Southern District of Indiana, Indianapolis Division.

No. IP 99-1195-C H/G--David F. Hamilton, Judge.

Argued February 14, 2002--Decided March 13, 2002

 Before FLAUM, Chief Judge, and BAUER and

EVANS, Circuit Judges.

 EVANS, Circuit Judge. Simon Property

Group attempts to appeal from the

district court’s decision effectively

staying the issuance of an injunction it

will issue when a final judgment is

entered. mySimon argues that we lack

jurisdiction because the district court’s

decision is not an order "granting . . .

or refusing" an injunction under 28

U.S.C. sec. 1292(a)(1).

 Simon Property Group (SPG) is an

Indianapolis-based real estate investment

trust that owns and manages retail real

estate, primarily shopping malls, in 36

states. SPG has been in the real estate

business for more than 40 years, but it

has operated under several different

names after being founded as Melvin Simon

and Associates. In 1993 the company went

public and became Simon Property Group.

Three years later it merged with

DeBartolo Realty Corporation and became

the Simon DeBartolo Group. In 1998 the

name changed back to Simon Property

Group. SPG is the largest retail real

estate investment trust in the United

States. Unlike mySimon, it does not offer

comparison shopping services on the

Internet. The only products SPG sells on
the Internet are a relatively small

number of shopping mall gift

certificates.

 In early 1998 Michael Yang and Yeogirl

Yun (we’ll refer to both, and other

colleagues like Lynn Gately, simply as

"Yang") founded a company to provide

comparison shopping via the Internet. As

a youth, Yang must have had permission to

take a lot of giant and scissor steps,

because he decided on "Simon" as a name

for his company, based on the childhood

game "Simon Says."

 Yang was interested in using the

Internet domain name "simon.com" but it

belonged to SPG (which was then known as

Simon DeBartolo). SPG was not interested

in selling the domain name. Therefore,

Yang began searching for new names,

hitting upon mySimon. Yang liked the name

because it suggested a personalized

shopping experience and because his

initials were M.Y. After learning that

the Internet domain name mysimon.com was

not taken, Yang moved forward with plans

to call the company mySimon.

 Although SPG was not interested in

selling its domain name to Yang’s

company, SPG executives did express an

interest in mySimon as a potential

partner or investment opportunity. Yang

and Andrew Halliday, who was co-president

of SPG’s strategic business unit, Simon

Brand Ventures, discussed this

possibility, but nothing materialized.

When Yang spoke with Halliday, mySimon

had not yet been incorporated, nor had

Yang done a trademark search on the

mySimon name. Therefore, Yang’s

communications with SPG referred to

mySimon as his company’s "temporary"

name. Halliday testified that he told

Yang that he should choose a different

name for mySimon to avoid using the

"Simon" name.

 mySimon launched its Web site and began

a national advertising campaign in

October 1998. By the summer of 1999 it

had spent millions of dollars on

advertising and had attained national

recognition.

 In March 1999, 6 months after mySimon’s

launch, SPG launched a corporate

"branding" campaign to inform consumers

that it owned and managed certain

shopping malls, something it had not done
in its 40 years of existence. According

to Karen Corsaro, former president of

Simon Brand Ventures, no other American

property management company had ever

attempted to "brand" any of its shopping

malls. Not surprisingly, the branding

campaign had its work cut out for it.

According to SPG’s annual report for

1999, a 1997 survey showed that only 3

percent of shoppers were aware of SPG’s

"Simon" name. The annual report for 1998

said, "There is much work to be done as

research shows shoppers do not have the

proper awareness of the added value that

a Simon-managed shopping center can

deliver." SPG’s advertising agency

reported that brand recognition for the

"Simon" name was "almost nonexistent"

before 1999. In an attempt to raise

consumer awareness, SPG spent $90 million

on advertising in 1999. According to

SPG’s annual report for 1999, the

branding campaign increased SPG’s

consumer awareness to 50 percent.

 In June 1999 SPG demanded that mySimon

stop using the "mySimon" name. When

mySimon refused, SPG sued under the

Lanham Act (and various state statutes),

alleging that SPG owned exclusive rights

to the "Simon" name and that mySimon’s

name, Web address, and cartoon mascot

named "Simon" infringed on it rights. SPG

moved for a temporary restraining order

and preliminary injunction. The district

court denied the TRO motion after a 2-day

hearing. SPG then withdrew its motion for

preliminary injunction. It never renewed

its request for interlocutory injunctive

relief while the case moved forward in

the district court.

 Eventually the case was tried to a jury.

SPG won a verdict despite presenting

relatively weak evidence that its "Simon"

name had attained secondary meaning or

that consumers were likely to confuse SPG

with mySimon. For example, the vast

majority of SPG’s "consumer" witnesses

who testified that they had heard of SPG

were professionals whose jobs required

them to be aware of the company. They

included employees of SPG’s advertising

agency, real estate analysts who covered

SPG, executives of the National

Association of Real Estate Investment

Trusts (of which SPG is a member), and

members of a law firm that represents

SPG. Indeed, because SPG’s witnesses were

so unrepresentative of the average
consumer, the district court termed their

testimony regarding secondary meaning "so

slight as to amount to almost nothing."

Additionally, the district court noted,

"Simon" is an extremely common first name

and surname, weakening SPG’s argument

that mySimon’s use of the name is likely

to confuse consumers.

 In contrast, mySimon presented

substantial survey evidence demonstrating

that there was no likelihood of confusion

between mySimon and SPG. Two of the four

surveys involved showing consumers in

shopping malls either a mySimon

advertisement or a picture of its home

page. The survey respondents were then

asked which company they thought put out

the advertisement or the Web page.

Respondents were also asked what other

products or services they believed were

put out by the same company and whether

they believed that the company whose ad

or Web page they believed that they were

seeing was related to any other company.

The format of the other two surveys

involved asking Internet users similar

questions about the mySimon Web site. The

surveys were conducted in June of 2000,

after the SPG branding campaign.

mySimon’s expert witness in consumer

research (whose name, coincidentally, is

Itamar Simonson) testified that the

average result across the four surveys

showed a "completely negligible"

likelihood of confusion, with under 2

percent of respondents indicating

relevant confusion. SPG presented no

survey evidence about the likelihood of

consumer confusion.

 Despite the relative strength of

mySimon’s evidence and the relative

weakness of SPG’s, SPG’s lawyer must have

done a whale of a selling job as the jury

awarded the company $11.5 million in

mySimon’s "profits" (although mySimon had

not yet earned any profits), $5.3 million

in corrective advertising (although SPG

had not engaged in any corrective

advertising), and $10 million in state

law punitive damages.

 After the jury spoke, SPG requested a

permanent injunction barring mySimon from

using the name "Simon." The district

court crafted an order permanently

enjoining mySimon from using the "Simon"

and "mySimon" names, the Web address

www.mysimon.com, and its "Simon" cartoon
mascot. Under the injunction, traffic to

the www.mysimon.com Web site would be

automatically redirected to mySimon’s new

site for one year after final judgment.

During that year, the company would be

allowed to use the mySimon name on its

Web site, but only to inform visitors of

its new name. After the transition

period, mySimon would be required to

transfer the www.mysimon.com domain name

to SPG. The district court stated that

the injunction was to issue upon entry of

a final judgment, a matter that still

must be worked out.

 mySimon moved for judgment as a matter

of law and a new trial. The district

court (Judge David F. Hamilton) granted

in part and denied in part these motions.

Judge Hamilton expressed serious doubt

regarding the strength of SPG’s evidence

but declined to overturn the jury’s

verdict on liability. The judge did,

however, set aside the $11.5 million

damages award because he found that

requiring mySimon to change its name

provided sufficient relief, as SPG’s

damages expert had based his estimate on

the assumption that mySimon would

continue to use the mySimon name

indefinitely. The court also held that

the $5.3 million corrective advertising

award was arbitrary and not supported by

the evidence. Consequently, Judge

Hamilton ordered a new trial on the

corrective advertising issue, subject to

SPG’s acceptance of a remittitur to

nominal damages of $10. Because Indiana

law limits punitive damages to the

greater of $50,000 or three times

compensatory damages, the judge also

reduced the jury’s $10 million punitive

damages award to $50,000 pending SPG’s

decision with respect to the remittitur.

 SPG rejected the remittitur and did not

ask the district court to reconsider any

aspect of its opinion. Therefore, final

judgment will not enter until completion

of a new trial on the corrective

advertising issue, and the injunction has

not issued. SPG filed a notice of appeal

seeking immediate issuance of the

injunction and a reduction of the Web

site transition period from 1 year to 30

days. SPG claims that we have subject

matter jurisdiction because the district

court’s delay in issuing the injunction

was, effectively, a denial of injunctive

relief, which is appealable. See 28
U.S.C. sec. 1292(a)(1).

 We distinguish between merely postponing

relief and denying a request for an

injunction. If the district court’s

decision simply postpones injunctive

relief, a party attempting to appeal must

show both that the district court’s

decision was a definitive disposition of

the request for relief and that

irreparable harm will result from a

delay. See Donovan v. Robbins, 752 F.2d

1170, 1173-74 (7th Cir. 1985)./1

 Donovan rested on the Supreme Court’s

holding in Carson v. American Brands, 450

U.S. 79 (1981). There, the Court held

that the district court’s refusal to

enter a proposed consent decree was

immediately appealable because it had the

same practical effect as a refusal to

enter an injunction and would cause

irreparable harm if not appealable. See

id. at 84, 86. But because sec.

1292(a)(1) was intended to carve out only

a limited exception to the final-judgment

rule, the Court held in Carson that the

statute is to be construed narrowly. See

id. For example, the Court noted that the

interlocutory orders in Switzerland

Cheese Ass’n v. E. Horne’s Market, Inc.,

385 U.S. 23 (1966), and Gardner v.

Westinghouse Broadcasting Co., 437 U.S.

478 (1978), were not appealable because

neither petitioner sought a preliminary

injunction, thereby undercutting the

argument that delaying review would cause

irreparable harm. See Carson, 420 U.S. at

85; see also Anderson v. City of Boston,

244 F.3d 236, 239 (1st Cir. 2001)

(holding that court of appeals lacked

jurisdiction because appellants did not

appeal from denial of interim relief or

seek other avenues of interlocutory

appeal, such as separate final judgment

on dismissed claims under Fed. R. Civ. P.

54(b) or certification for interlocutory

appeal under 28 U.S.C. sec. 1292(b));

Huminski v. Rutland Police Dep’t, 221

F.3d 357, 361 (2d Cir. 2000) (holding

same and also noting that appellant made

no effort to expedite appeal).

 Here, SPG voluntarily abandoned its

quest for a preliminary injunction after

the district court denied its TRO motion.

This strongly undermines its argument

today that a delay in issuing a permanent

injunction will cause it to suffer

irreparable harm. SPG cites Processed
Plastic Co. v. Warner Communications,

Inc., 675 F.2d 852 (7th Cir. 1982), for

the proposition that its inability to

control the nature and quality of

mySimon’s services is "the most corrosive

and irreparable harm attributable to

trademark infringement." See id. at 858

(quoting 4 R. Calmann, Unfair

Competition, Trademarks and Monopolies,

section 88.3 (b) at 205 (3rd ed. 1970)).

The potential threat to SPG’s name is

questionable. SPG and mySimon do not

offer similar services. SPG offered

rather weak evidence of the likelihood of

confusion between the two enterprises,

whereas mySimon presented survey evidence

showing that there was a negligible risk

of confusion. We think SPG’s plea of

irreparable harm is thin at best.

 Nor can SPG show that the district

court’s decision was a definitive

disposition with regard to injunctive

relief. The judge, as the case continues,

is free to revise his ruling at any time

before entering final judgment. See

Samayoa v. Chicago Bd. of Educ., 783 F.2d

102, 104 (7th Cir. 1986). Therefore,

because SPG cannot show that the district

court’s decision to delay entry of the

injunction was a definitive disposition

causing SPG irreparable harm, we lack

jurisdiction.

APPEAL DISMISSED.

FOOTNOTE

/1 SPG argues that it is not required to show

irreparable harm under Holmes v. Fisher, 854 F.2d

229 (7th Cir. 1988). We held in Holmes, however,

that irreparable injury is not relevant only

where the district court’s order is unquestionably the denial of an injunction. See id. at 231.

Here, the district court’s decision was not

unquestionably the denial of an injunction.