United States Court of Appeals

For the First Circuit 

No. 14-2324 

ARBORJET, INC., 

Plaintiff, Appellee, 

v. 

RAINBOW TREECARE SCIENTIFIC ADVANCEMENTS, INC., 

Defendant, Appellant. 

APPEAL FROM THE UNITED STATES DISTRICT COURT 

FOR THE DISTRICT OF MASSACHUSSETTS 

[Hon. Nathaniel M. Gorton, U.S. District Judge] 

Before 

Selya, Circuit Judge, 

Souter,* Associate Justice, 

Lipez, Circuit Judge. 

July 16, 2015 

 * Hon. David H. Souter, Associate Justice (Ret.) of the 

Supreme Court of the United States, sitting by designation. 
Scott P. Lopez, with whom Joshua M. D. Segal and Lawson & 

Weitzen, LLP were on brief, for appellant. 

Kristen S. Scammon, with whom Michael S. Day and Torres, 

Scammon & Day, LLP were on brief, for appellee. 
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SOUTER, Associate Justice. This appeal challenges a 

preliminary injunction meant to enforce a contractual agreement 

and prohibit a trademark violation. We affirm in part and reverse 

in part. 

I. 

Plaintiff-Appellee Arborjet, Inc. manufactures and sells 

TREE-age, an emamectin benzoate solution used to protect trees 

from various pests. Through the period from August 2008 to 

February 2013, Arborjet granted Defendant-Appellant Rainbow 

Treecare Scientific Advancements, Inc. an exclusive right to 

distribute TREE-age. Their sales agency contract included this 

provision: 

[Rainbow] agrees, in view of the confidential 

information regarding Arborjet's business 

affairs, plans, and necessities, that 

[Rainbow] will not engage in affairs intended 

to replicate [A]rborjet's products or 

processes. 

After the termination of this agreement, Rainbow began marketing 

and distributing ArborMectin, another emamectin benzoate 

combination meant to compete directly with TREE-age. Arborjet 

sued Rainbow in Massachusetts trial court, seeking to enjoin 

Rainbow's sales of ArborMectin and claiming breach of contract, 

breach of implied covenant of good faith and fair dealing, false 
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advertising under the Lanham Act and Massachusetts law, 15 U.S.C. 

§ 1125(a)(1)(B); Mass. Gen. Laws ch. 266, § 91, false designation 

of origin under the Lanham Act, 15 U.S.C. § 1125(a)(1)(A), and 

common law unfair competition. Rainbow removed the action to 

federal court. 

In the preliminary injunction proceedings from which 

this appeal comes, the district court did not find for Arborjet on 

the prospects of its Lanham Act or state law tort and statutory 

claims, but it did find likely success on those for breach of 

contract and implied covenant of good faith and fair dealing. The 

court said that Arborjet had "demonstrated a likelihood that it 

will be able to prove that [Rainbow] engaged in research and 

development to create a product very similar to TREE-age," in 

violation of the sales agency agreement. In summarizing the 

support it found for this conclusion, the court described 

ArborMectin as the "defendant's own . . . product" and stated that 

"Rainbow's website describes partnering with several institutions 

and companies to conduct research studies regarding ArborMectin's 

effectiveness," at least one of which "took place while Rainbow 

was . . . subject to the terms of the [sales agency a]greement." 

The district court accordingly granted Arborjet an injunction to 

run during the litigation, with a principal order that "[Rainbow] 
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and those acting in concert with it . . . immediately cease and 

desist selling, distributing and/or marketing ArborMectin."

II. 

We start with the state law contract claims and a word 

about the deferential standard of review: whether the district 

court abused its discretion in issuing the preliminary injunction 

addressing breach of those obligations. See TEC Eng'g Corp. v. 

Budget Molders Supply, Inc., 82 F.3d 542, 544–45 (1st Cir. 1996). 

Thus, we may "set aside [the district court's] ruling only if . . . 

persuaded that [it] mistook the law, clearly erred in its factual 

assessments, or otherwise abused its discretion in granting the 

interim relief." McGuire v. Reilly, 260 F.3d 36, 42 (1st Cir. 

2001). Our review recognizes "the preliminary nature of the 

proceeding; in the context of a preliminary injunction motion, the 

district court's findings need not be overly detailed, and they do 

not bind the court in subsequent proceedings." TEC Eng'g Corp., 

82 F.3d at 545; see also Narragansett Indian Tribe v. Guilbert, 

934 F.2d 4, 6 (1st Cir. 1991) ("[A] party losing the battle on 

likelihood of success may nonetheless win the war at a succeeding 

trial on the merits."). 

To grant a preliminary injunction, a district court must 

find the following four elements satisfied: (1) a likelihood of 
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success on the merits, (2) a likelihood of irreparable harm absent 

interim relief, (3) a balance of equities in the plaintiff's favor, 

and (4) service of the public interest. See Voice of the Arab 

World, Inc. v. MDTV Med. News Now, Inc., 645 F.3d 26, 32 (1st Cir. 

2011) (citing Winter v. Natural Res. Def. Council, Inc., 555 U.S. 

7, 20 (2008)). The second through fourth considerations are not 

disputed, so we focus solely on likelihood of success, and find no 

abuse of discretion in the conclusion that Arborjet was likely to 

succeed on its contract claims.1

Rainbow argues first that it was clear error to find a 

likely showing that it contributed to the creation of ArborMectin, 

contending that the record undisputedly shows that a different 

company, Rotam, created ArborMectin on its own. The evidence 

before the district court, however, was not nearly as one-sided as 

Rainbow says. To be sure, the Environmental Protection Agency 

(EPA) lists Rotam as the approved creator of ArborMectin, but the 

question is whether Rainbow contributed to its creation. And, on 

that point, the district court was presented with two e-mails from 

 1 The district court treated claims based on the express terms 

and the implied covenant of good faith dealing together, and none 

of the authorities cited by Arborjet provide any basis for treating 

them differently here. We need not reach the implied covenant 

claim because we affirm as to the written terms. 
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a Rainbow sales representative describing ArborMectin as Rainbow's 

own product, and truly undisputed evidence that Rainbow conducted 

at least ten studies across the United States on the effectiveness 

of ArborMectin, some of them years before Rotam submitted its 

formula to EPA for approval. It was certainly plausible, then, 

for the court to infer that Rainbow played a role in the product's 

creation. Although Rainbow counters that the statements were false 

and that its studies were merely the practices of a sensible 

distributor, these arguments at best show only that, if the court 

had accepted them, it could reasonably have reached the opposite 

conclusion. But "where the facts can support two plausible but 

conflicting interpretations of a body of evidence, the 

factfinder's choice between them cannot be clearly erroneous." 

deBenedictis v. Brady-Zell (In re Brady-Zell), 756 F.3d 69, 72 

(1st Cir. 2014). 

Next, Rainbow argues that the district court fell into 

legal error when it interpreted the contractual language quoted 

earlier. Rainbow cites a dictionary definition of "replicate" to 

contend that "affairs intended to replicate" applies only to 

efforts to produce a compound that would be an exact copy of TREEage. Thus, Rainbow concludes, the contractual prohibition does 
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not apply to the development of ArborMectin, which both parties 

understand to differ from TREE-age in toxicity and other details. 

The district court considered and rejected this 

argument, in faithfully applying Massachusetts contract law that 

"[t]he words of a contract must be considered in the context of 

the entire contract rather than in isolation." Brigade Leveraged 

Capital Structures Fund Ltd. v. PIMCO Income Strategy Fund, 995 

N.E.2d 64, 69 (Mass. 2013) (internal quotation marks omitted). 

The phrase at issue here ("will not engage in affairs intended to 

replicate [A]rborjet's products") is prefaced by language 

indicating Arborjet's concern about guarding information not 

available to the public and potentially damaging if disclosed to 

competitors ("in view of the confidential information regarding 

Arborjet's business affairs, plans, and necessities"). 

Accordingly, the prohibition was probably aimed at preventing 

efforts by Rainbow to place Arborjet at a competitive disadvantage, 

reflecting a concern broader than the mere creation of an exact 

copy.2 That said, we need not determine here the exact scope of 

 2 Another point casts further doubt on Rainbow's reading: at 

the date of the contract, the active agent in TREE-age was 

apparently under patent protection. See Rainbow's Memorandum of 

Law in Opposition to Motion for Preliminary Injunction at 1, No. 

14-cv-14129 (D. Mass. filed Nov. 18, 2014), ECF No. 17 (stating 

that ArborMectin was created after the patent on emamectin benzoate 
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the generally worded prohibition; for now it is enough to say 

simply that the dictionaries do not confine "replicate" to exact 

duplication, and Rainbow's claims of superiority for "our" product 

(which Rainbow extensively tested) raise a likelihood that Rainbow 

will be shown to have made efforts to develop ArborMectin as a 

competing product in violation of the contractual restriction 

during the contract period. For that matter, common sense suggests 

that, if the parties had an object as narrow as Rainbow claims, 

they would have written clearer language specific to that aim. 

See id. at 70 ("Common sense is as much a part of contract 

interpretation as is the dictionary or the arsenal of canons." 

(internal quotation marks omitted)). Thus the district court did 

not abuse its discretion in entering the portion of the preliminary 

injunction based on Arborjet's contract claim.3

 

 

expired). If that is true, it seems highly unlikely (albeit not 

impossible) that Arborjet would include a contractual prohibition 

on exact copies only, as the patent laws already saw to that. 

3 Rainbow initially argued that the injunction must be vacated 

because it has no limit on time. Rainbow appears to have wisely 

backed away from that argument, as the preliminary nature of the 

injunction ensures that it will be limited to the duration of the 

present litigation. 
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III. 

Rainbow challenges a second term of the injunction, not 

yet discussed: 

[Rainbow] and those acting in concert with it 

shall properly attribute Arborjet's 

trademarks "Arborjet" and "TREE-age" by 

appending the ® symbol to those marks and a 

footnote stating "Registered Trademark of 

Arborjet, Inc."

Rainbow objects that ordering proper attribution of "Arborjet" and 

"TREE-age" was improper given the district court's rulings on the 

Lanham Act claims. 

Here we agree with Rainbow. This provision apparently 

responded to Arborjet's claim of "false designation of origin" 

under the Lanham Act. 15 U.S.C. § 1125(a)(1)(A). Arborjet alleged 

that Rainbow failed to attribute Arborjet trademarks properly in 

Rainbow communications, that failure of proper attribution was 

likely to cause consumer confusion, and that such likelihood of 

confusion demonstrated Rainbow's violation of § 1125(a)(1)(A). 

Rainbow's opposition papers disputed that any improper attribution 

would cause consumer confusion. Thus, according to the district 

court filings, it would appear that the grant of preliminary 

injunctive relief, so far as ordering Rainbow to attribute Arborjet 
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trademarks properly, responded to the allegedly false designation 

of origin. 

The problem, however, is that the district court 

concluded that Arborjet was not likely to succeed on this claim. 

Indeed, it said that the evidence on this point "weigh[ed] against 

a finding of a likelihood of confusion." This was fatal to the 

request for an injunctive order for trademark designation. In 

this circuit, proving likelihood of success on the merits is the 

"sine qua non" of a preliminary injunction. New Comm Wireless 

Servs., Inc. v. SprintCom, Inc., 287 F.3d 1, 9 (1st Cir. 2002). 

"[I]f the moving party cannot demonstrate that he is likely to 

succeed in his quest, the remaining factors become matters of idle 

curiosity.” Id. 

In its effort to defend this portion of the preliminary 

injunction, Arborjet contends that the district court did not grant 

such relief under the Lanham Act claim but rather to give effect 

to a binding stipulation made by Rainbow in the course of the 

proceedings. The record is otherwise, however. 

As mentioned earlier, Arborjet's complaint contained 

many claims. To support its false advertising claims, it alleged 

that Rainbow's representations of ArborMectin as "improved TREEage" may mislead customers into thinking that ArborMectin was 
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produced by Arborjet. At the November 2014 preliminary injunction 

hearing, the district court appeared to share that concern, and it 

ended the hearing by strongly encouraging the parties to "come to 

some mutual middle ground." Shortly after, Rainbow submitted a 

letter indicating that it had "made an offer to Arborjet that [it] 

will not make future advertising or marketing statements that 

ArborMectin is 'improved TREE-age'" and that, even though the case 

had not settled, Rainbow "agree[d] to voluntarily comply with its 

proposal." The district court treated that submission as a 

"binding stipulation." 

As this procedural recounting demonstrates, the 

stipulation does not support the preliminary injunction. The 

stipulation appears to relate to the false advertising claim, and 

it was in the false advertising portion of its findings that the 

district court mentioned the agreement and spoke of it as a binding 

stipulation. The preliminary injunction, however, probably 

relates to the false designation of origin claim, for the reasons 

explained earlier. Yet, even as to the false advertising claim, 

the court made no finding of likelihood of success, stipulation or 

no stipulation. What is more, even if we were to look to the 

stipulation as authority for this provision of the injunction, the 

support would come up short, for the stipulation is limited to the 
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use of a two-word phrase in marketing materials, whereas the 

preliminary injunction mandates Rainbow's attribution of Arborjet 

trademarks across the board. Hence, we do not believe this term 

of the preliminary injunction merely effectuates Rainbow's 

stipulation. The upshot is that this portion of the order must be 

vacated, being unsupported by a finding of likely success on a 

relevant claim. New Comm Wireless Servs., 287 F.3d at 9. 

IV. 

The order comprising the preliminary injunction is 

affirmed in part, and reversed in part. Each party shall bear its 

own costs.