United States District Court, D. Maine
For JL POWELL CLOTHING LLC, JL POWELL LLC, Plaintiffs: NICOLE L. BRADICK, RICHARD L. O'MEARA, THOMAS C. NEWMAN, LEAD ATTORNEYS, MURRAY PLUMB & MURRAY, PORTLAND, ME.
For JOSHUA L POWELL, individually, doing business as FIELD, doing business as FIELD OUTFITTING, doing business as FIELD OUTFITTING COMPANY, Defendant: GINA L. DURHAM, JOSEPH COLLINS, LEAD ATTORNEYS, DLA PIPER LLP (U.S.), CHICAGO, IL; BENJAMIN S. PIPER, PRETI, FLAHERTY LLP, PORTLAND, ME; TIMOTHY J. BRYANT, PRETI, FLAHERTY, BELIVEAU, & PACHIOS, LLP, PORTLAND, ME.
ORDER ON REMAND
Nancy Torresen, United States District Judge.
The First Circuit has remanded this case to me to address the irreparable injury component of my previous preliminary injunction order. For the reasons stated below, I find that the irreparable injury component has been satisfied and order that the preliminary injunction remain in place. I find that the Plaintiffs have also established their right to an injunction under their trademark infringement claim.
In January of 2014, I enjoined Joshua L. Powell (" Defendant" or " Powell") " from using his name or endorsement in connection with his business venture The Field, and . . . directed [Defendant] to instruct other persons or entities using his name or endorsement in connection with The Field to cease any such use." Order of Jan. 30, 2014 at 39 (" PI Order") (ECF No. 80). Powell appealed that order pursuant to 28 U.S.C. § 1292(a)(1), which allows interlocutory appeals from orders granting preliminary injunctions. Br. of Appellant 1, JL Powell Clothing LLC v. Powell, No. 14-1242 (1st Cir. June 9, 2014) (" Appellant Br.").
While the First Circuit found no abuse of discretion in my analysis of the likelihood of success on the merits, balance of equities, or public interest, it did take issue with my reasoning on irreparable harm. JL Powell Clothing LLC, 2014 WL 5410287, at *3-6. I relied on the existence of a contractual provision stipulating to irreparable harm in the event of a breach, rather than making an independent factual finding based on the record. PI Order 29. The First Circuit declined to resolve " whether resting on a contractual provision of irreparable injury alone is error" and directed me to determine whether the record supports a finding of irreparable harm. JL Powell Clothing LLC, 2014 WL
5410287, at *5-6. In the event that I found irreparable harm, the First Circuit
further directed me to revisit the scope of the injunction. Id. at *8,
The Plaintiffs based their arguments for injunctive relief on both their contract claim and their trademark claims.
Because I relied on the contractual provision, I made no " factual findings as
to customer confusion." Id. at *2. And, because I found that a preliminary injunction was supported based on the Plaintiffs' contract claim, I considered a separate analysis under the Plaintiffs' related trademark claim unnecessary. The issue of customer confusion, however, is at the heart of both the trademark infringement claim and the irreparable harm analysis under the contract claim. Accordingly, on remand, I analyze whether the Plaintiffs have established a right to injunctive relief under their trademark infringement claim before I address irreparable harm under the contract claim.
After a complete review of the record, I find that the Plaintiffs have established that they are entitled to preliminary injunctive relief for the Defendant's likely infringement of the " J.L. Powell" trademark, owned by JL Powell Clothing LLC. I further find that the Plaintiffs have demonstrated under their contract claim that they are likely to suffer irreparable harm resulting from Powell's use of his name or endorsement in connection with The Field absent preliminary relief.
A party moving for a preliminary injunction under Federal Rule of Civil Procedure 65 must " 'establish that he is likely to succeed on the merits, that he is likely to suffer irreparable 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.'" Voice of the Arab World, Inc. v. MDTV Med. News Now, Inc., 645 F.3d 26, 32 (1st Cir. 2011) (quoting Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 20, 129 S.Ct. 365, 172 L.Ed.2d 249 (2008)).
I. Evidentiary Background
I rely on the following factual background taken from the record as it has been developed at the preliminary injunction stage of this suit. The recitation of the facts below is abbreviated; a full ...