United States District Court, E.D. Virginia, Alexandria Division
O'Grady, United States District Judge
matter comes before the Court on Apple's Motion for a
Permanent Injunction. Dkt. 110. For the following reasons the
Motion is granted.
seeking an injunction must demonstrate "(1) it has
suffered an irreparable injury; (2) remedies available at law
are inadequate; (3) the balance of the hardships favors the
party seeking the injunction; and (4) the public interest
would not be disserved by the injunction." PBM
Prods., LLC v. Mead Johnson & Co., 639 F.3d 111, 126
(4th Cir. 2011).
a party seeking an injunction must show it would suffer
irreparable injury if the injunction was not granted.
Lone Star Steakhouse & Saloon, Inc. v. Alpha of
Virginia, Inc., 43 F.3d 922, 938 (4th Cir. 1995).
Although not going so far as to hold irreparable injury
always follows from trademark infringement, the Fourth
Circuit has held "irreparable injury regularly follows
from trademark infringement." Id. at 939. A
finding of trademark infringement coupled with evidence of
actual consumer confusion may be sufficient to demonstrate
irreparable injury. See id.
the Court found RXD infringed upon Apple's trademarks.
While that finding alone does not necessarily prove
irreparable injury, Apple provided as evidence a consumer
survey which demonstrated a twenty-seven percent confusion
rate. This rate is well above the ten percent benchmark that
the Fourth Circuit has identified as constituting actual
confusion. Sara Lee Corp. v. Kayser-Roth Corp., 81
F.3d 455, 467 n.15 (4th Cir. 1996). Because there has been a
finding of trademark infringement and Apple has provided
evidence of actual confusion, the Court finds Apple will
suffer irreparable injury if an injunction does not issue.
Remedies Available at Law
damages in trademark infringement suits are typically
inadequate because while they may compensate plaintiffs for
damages they have already incurred, monetary damages do not
prevent future infringement from occurring. See
Hammerhead Entm't, LLC v. Ennis, 2011 WL 2938488, at
*8 (E.D. Va. July 19, 2011). Therefore, without an
injunction, a plaintiff would "suffer continued
infringement" and be forced to "bring successive
suits for monetary damages." Id. (quoting
Teaching Co. P'ship v. Unapix Entm 7,
Inc., 87 F.Supp.2d 567, 587 (E.D. Va. 2000)).
these reasons, Apple's remedies at law are inadequate. If
the Court awarded money damages, Apple would only be
compensated for the infringement that has already occurred
and would be forced to bring successive suits to continuously
recover damages from RXD's infringing use. Thus, there is
clearly no adequate remedy at law.
Balance of Hardships
balance of hardships weighs in a plaintiffs favor when the
infringer "possesses no legal right to continue their
current course of conduct." Portfolio Recovery
Assocs., Inc. v. Portfolio Recovery Grp., LLC, 2013 WL
5723869, at *10 (E.D. Va. Oct. 18, 2013); Hammerhead
Entm 7, 2011 WL 2938488, at *9 (same). Here, the Court
has found RXD was not a priority user of the IP AD mark and
its use of IP AD infringed upon Apple's trademarks. Thus,
RXD has no legal right to continue its infringing use of IPAD
and the balance of hardships factor weighs in Apple's
purpose of trademark law is to allow consumers to identify
the source of goods. In trademark infringement cases,
injunctions serve the public interest "by preventing
future consumers from being misled." Lone Star
Steakhouse, 43 F.3d at 939. Here, RXD's use of IPAD
has caused actual confusion regarding the source of RXD's
product. This is the harm trademark law is meant to prevent.
To protect consumers, it is in the public interest to enjoin
RXD's use of IPAD because its current use prevents
consumers from correctly identifying the source of RXD's
a permanent injunction in this case is appropriate. The only
remaining issue is the scope of the injunction. In its
proposed order, Apple seeks to enjoin RXD's use of both
IPAD and IPOD. RXD argues that if the Court issues an
injunction it should be limited solely to enjoining RXD's
use of IPAD. RXD's argument is unavailing because the
Court granted summary judgment in Apple's favor for all
of Apple's counterclaims, which included claims that RXD
infringed upon Apple's IPOD mark. Furthermore, even
absent this grant of summary judgment, enjoining RXD's
use of IPOD is justified by the "safe distance"
rule, which posits that "once a company commits an
unfair business practice it 'should thereafter be
required to keep a safe distance away from the margin
line.'" Osem Food Indus. Ltd. v. Sherwood Foods,
Inc.,917 F.2d 161, 164 n.4 (4th Cir. 1990) (quoting