             Case: 15-13818    Date Filed: 04/28/2016     Page: 1 of 12


                                                               [DO NOT PUBLISH]



              IN THE UNITED STATES COURT OF APPEALS

                          FOR THE ELEVENTH CIRCUIT
                            ________________________

                                 No. 15-13818
                             Non-Argument Calendar
                           ________________________

                   D.C. Docket No. 6:15-cv-01028-PGB-TBS


HOOP CULTURE, INC.,
a Florida corporation,

                                                        Plaintiff - Counter Defendant
                                                                            Appellant,

                                     versus

GAP INC.,
a Delaware corporation,

                                                Defendant - Counter Claimant
                                                                   Appellee.
                           ________________________

                  Appeal from the United States District Court
                      for the Middle District of Florida
                        ________________________

                                (April 28, 2016)

Before HULL, MARCUS, and ROSENBAUM, Circuit Judges.

PER CURIAM:
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      In this action, Plaintiff Hoop Culture, Inc. (“Hoop Culture”), charges that

Defendant GAP Inc. (“GAP”) infringed and counterfeited its trademark,

“EAT…SLEEP…BALL.®” by selling shirts with a virtually identical phrase, EAT

SLEEP BALL, through its Old Navy brand. After filing its complaint, Hoop

Culture moved for a preliminary injunction to block GAP from selling items with

the allegedly stolen mark. The district court held a hearing and then denied

preliminary injunctive relief, concluding that Hoop Culture was not substantially

likely to succeed on the merits of its claims and that it had not demonstrated that it

would suffer irreparable injury unless an injunction issued. Hoop Culture now

brings this interlocutory appeal from the denial of its motion for a preliminary

injunction. We have jurisdiction under 28 U.S.C. § 1292(a)(1).

                                   I. Background

      We present the relevant facts as found by the district court. Plaintiff Hoop

Culture is a clothing and accessories brand that revolves around promoting the

lifestyle associated with the game of basketball. Hoop Culture is and continues to

aspire to be a premium clothing brand. At issue in this case is Hoop Culture’s

federal trademark, EAT...SLEEP...BALL.®, for which Hoop Culture obtained

registration in January 2015. Hoop Culture develops, markets, and sells clothing

and accessories bearing this trademark, and it derives about 30% of its sales (and

growing) from the sale of items bearing the mark.


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      Defendant Gap is a global retailer of clothing and accessories and is the

parent company for a number of retail brands, including Old Navy. In April 2014,

Gap designed t-shirts for Old Navy’s activewear product line bearing the phrase

“EAT SLEEP BALL.” Beginning in 2012, Gap had manufactured other t-shirts

with phrases such as EAT SLEEP WIN, EAT SLEEP SKATE, and EAT SLEEP

PARTY REPEAT. Gap’s Active Graphics Manager testified that he had never

heard of Hoop Culture or its products bearing the mark EAT...SLEEP...BALL.®

when he designed the similar Old Navy shirts.          In total, Gap designed and

manufactured approximately 115,000 shirts with the phrase EAT SLEEP BALL,

which went on sale in March 2015. As of the evidentiary hearing on August 10,

2015, approximately 36,000 shirts remained in Old Navy stores’ inventory, and

Gap expected to sell out of the shirts in October 2015. Gap had no plans to sell

products bearing EAT SLEEP BALL in the future.

      Hoop    Culture    generally   sells   its   t-shirts   bearing    the   mark

EAT…SLEEP…BALL.® for approximately $28 per shirt. Old Navy has sold its

corresponding shirts for as low as $4 per shirt. Other than the ellipses used in

Hoop Culture’s shirt and the logos of each of the companies—Hoop Culture’s shirt

has HOOPCULTURE underneath the trademark, while Old Navy’s shirt has a

“boomerang” logo trademark—the shirts are “remarkably similar,” according to

the district court. Hoop Culture’s president testified that Hoop Culture produces


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high-quality products, dedicates a substantial amount of resources to advertising

and branding, and does not want to be associated with Old Navy.

      Hoop Culture first learned of Gap’s use of the mark in April 2015. In June

2015, Hoop Culture filed suit against Gap, alleging two counts under the Lanham

Act: (1) infringement and/or counterfeiting of a federally registered trademark, 15

U.S.C. § 1114(1), and (2) false designation of origin and unfair competition, 15

U.S.C. § 1125(a). Hoop Culture sought injunctive relief, an accounting of Gap’s

profits, and damages. Shortly thereafter, Hoop Culture moved for a preliminary

injunction to stop Gap from selling t-shirts bearing the mark. Gap filed an answer

to the complaint and a counterclaim for cancellation of trademark registration.

      The district court held an evidentiary hearing on August 10, 2015, and,

following the hearing, entered an order denying Hoop Culture’s motion for a

preliminary injunction. The court concluded that Hoop Culture had not shown that

it was substantially likely to succeed on the merits of the case or that it would be

irreparably harmed if an injunction did not issue. Hoop Culture now appeals.

                              II. Standard of Review

      We review a district court’s denial of a preliminary injunction for “a clear

abuse of discretion.” Siegel v. LePore, 234 F.3d 1163, 1175 (11th Cir. 2000) (en

banc) (emphasis in original); E. Remy Martin & Co., S.A. v. Shaw-Ross Int’l

Imports, Inc., 756 F.2d 1525, 1529 (11th Cir. 1985). We review the district court’s


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findings of fact for clear error and its conclusions of law de novo. N. Am. Med.

Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1216 (11th Cir. 2008).

                                    III. Discussion

      A district court may grant a preliminary injunction only if the movant makes

four showings: (1) the movant enjoys a substantial likelihood of success on the

merits of the underlying case; (2) the movant would suffer irreparable harm

without an injunction; (3) the harm suffered by the movant if no injunction issued

would exceed the harm suffered by the opposing party if it did; and (4) the

injunction would not disserve the public interest. Siegel, 234 F.3d at 1176. “In

this Circuit, “[a] preliminary injunction is an extraordinary and drastic remedy not

to be granted unless the movant clearly established the burden of persuasion as to

each of the four prerequisites.” Id. (internal quotation marks omitted). Only the

first two prerequisites are at issue in this appeal.

      The Lanham Act prohibits the unauthorized use in commerce of “any

reproduction, counterfeit, copy, or colorable imitation of a registered mark” that is

likely to cause confusion about the source of the good or service. 15 U.S.C.

§ 1114(1)(a). To prevail on a claim of trademark infringement, Hoop Culture must

establish that (1) it possesses a valid mark; (2) Gap used the mark in commerce in

connection with the sale or advertising of goods; and (3) Gap used the mark in a




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manner likely to confuse consumers. 1 N. Am. Med. Corp., 522 F.3d at 1218. The

district court found that Gap had presented a viable defense to the validity of the

mark and that Hoop Culture had not shown a likelihood of consumer confusion.

       Hoop Culture challenges various aspects of the district court’s merits ruling.

With regard to the validity of the mark, Hoop Culture asserts that the court failed

to give any presumption of validity to its trademark and, relatedly, improperly

shifted the burden of proof to Hoop Culture to prove that its mark was valid. As

for the likelihood of confusion, Hoop Culture charges that the court erred in

affording Gap a “good faith” defense, improperly required Hoop Culture to

produce evidence of actual confusion, and failed to acknowledge that Gap’s shirts

were counterfeits.

       However, we need not decide Hoop Culture’s merits arguments to resolve

this appeal, so we do not reach the merits at this time. “A showing of irreparable

injury is the sine qua non of injunctive relief.” Siegel, 234 F.3d at 1176 (internal

quotation marks omitted). Even if Hoop Culture could establish a likelihood of

success on the merits, the absence of a showing of irreparable injury, “would,

standing alone, make preliminary injunctive relief improper.” Id.



       1
         The elements of Hoop Culture’s claim for false designation of origin, 15 U.S.C.
§ 1225(a), are for purposes of this case the same as its claim for trademark infringement, 15
U.S.C. § 1114(1)(a). See Custom Mfg. & Eng’g, Inc. v. Midway Servs., Inc., 508 F.3d 641, 647-
48 (11th Cir. 2007).
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      The district court determined that Hoop Culture had not shown that it would

suffer irreparable harm if an injunction did not issue.           The court based its

determination on the following findings: Hoop Culture had not lost market share

over Gap’s selling of the shirts; no testimony showed that those who purchased the

shirts from Old Navy would have purchased shirts from Hoop Culture; Hoop

Culture did not offer persuasive evidence of brand confusion; Gap would be selling

out of the shirts in the next two months and would not be reordering; and any

injuries sustained could be cured by monetary damages. The district court also

declined to afford Hoop Culture a presumption of irreparable harm because it

failed to establish a likelihood of success on the merits.

      In challenging the district court’s no-irreparable-harm determination, Hoop

Culture does not argue that it independently offered proof, based on the specific

facts of this case, showing that it would be irreparably harmed without an

injunction. Nor does Hoop Culture argue that the court erred in finding a lack of

irreparable harm based on the findings set forth above. Instead, Hoop Culture’s

sole contention is that it was entitled to a presumption of irreparable injury once it

established a likelihood of success on the merits.

      In the past, this Circuit, like many others, afforded a “presumption” of

irreparable harm in trademark-infringement cases once the plaintiff established a

likelihood of success on the merits. N. Am. Med. Corp., 522 F.3d at 1227. But the


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Supreme Court’s decision in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388,

126 S. Ct. 1837 (2006), “call[ed] into question whether courts may presume

irreparable harm merely because a plaintiff in an intellectual property case has

demonstrated a likelihood of success on the merits.” N. Am. Med. Corp., 522 F.3d

at 1227-28 (concluding that eBay, which addressed a permanent injunction in a

case of patent infringement, also applied to a preliminary injunction in a case of

trademark infringement).

      The Court in eBay held that courts must apply the four-factor test—set out at

the beginning of this discussion section—and exercise their discretion to grant or

deny injunctive relief “consistent with traditional principles of equity” based on the

facts of the particular case. eBay, 547 U.S. at 393-94, 126 S. Ct. at 1840-41. In

doing so, the court admonished both the district and appellate courts in that case

for applying categorical rules to decisions about injunctive relief.          See id.

(“[T]raditional equitable principles do not permit such broad classifications.”).

Specifically, the Court rejected the court of appeals’ “general rule . . . that a

permanent injunction will issue once infringement and validity have been

adjudged.” Id. at 393-94, 126 S. Ct. at 1841.

      Then, in Winter v. Natural Resources Defense Council, Inc., the Court

underscored the plaintiff’s burden to show a likelihood of irreparable harm that

would occur without a preliminary injunction. See 555 U.S. 7, 20-22, 129 S. Ct.


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365, 374-75 (2008). A preliminary injunction may not be entered “based only on a

‘possibility’ of irreparable harm.” Id. at 21-22, 129 S. Ct. at 375. 2

       All of this is not to say that a presumption of irreparable harm or something

like it will never be an appropriate exercise of the district court’s equitable

discretion. In North American Medical Corp., for example, we indicated that a

presumption of irreparable injury may be “an appropriate exercise of [the district

court’s] discretion in light of the historical traditions” where “the particular

circumstances of the instant case bear substantial parallels to previous cases” in

which irreparable harm has been found. N. Am. Med. Corp., 522 F.3d at 1228

(citing eBay, 547 U.S. at 394-97, 126 S. Ct. at 1841-43 (concurring opinions of

Chief Justice Roberts and Justice Kennedy, representing the views of seven

Justices)). What matters is that the court exercises its discretion in light of the

facts of the case and does not simply apply a categorical rule.

       Here, Hoop Culture cannot rely solely on its likelihood of success on the

merits, which we have assumed for purposes of this discussion, to establish a

likelihood of irreparable harm. See eBay, 547 U.S. at 393-94, 126 S. Ct. at 1840-

       2
          Following eBay and Winter, at least two circuit courts have held that applying a
presumption of irreparable harm in trademark-infringement cases is no longer permitted,
Ferring Pharm., Inc. v. Watson Pharm., Inc., 765 F.3d 205, 216-17 (3d Cir. 2014), Herb Reed
Enters., LLC v. Fla. Entm’t Mgmt., Inc., 736 F.3d 1239, 1249-50 (9th Cir. 2013), while at least
four others, including this circuit, have held or indicated that no presumption of irreparable harm
applies in cases of copyright infringement, Flava Works, Inc. v. Gunter, 689 F.3d 754, 755 (7th
Cir. 2012), Salinger v. Colting, 607 F.3d 68, 79-80, 82 (2d Cir. 2010), Peter Letterese & Assocs.,
Inc. v. World Inst. Of Scientology Enters., 533 F.3d 1287, 1323 (11th Cir. 2008), Christopher
Phelps & Assocs., LLC v. Galloway, 492 F.3d 532, 543 (4th Cir. 2007).
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41; N. Am. Med. Corp., 522 F.3d at 1228; cf. Peter Letterese & Assocs., Inc. v.

World Inst. Of Scientology Enters., 533 F.3d 1287, 1323 (11th Cir. 2008) (“As the

Supreme Court [in eBay] has observed, a permanent injunction does not

automatically issue upon a finding of copyright infringement.”). Hoop Culture

must actually show based on the facts of this case that irreparable harm was

“likely,” not merely possible, in the absence of an injunction. See Winter, 555 U.S.

at 20-22, 129 S. Ct. at 374-75. Nor has Hoop Culture identified any “substantial

parallels” between this case and previous cases in which irreparable harm has been

found. See N. Am. Med. Corp., 522 F.3d at 1228.

      In any case, we need not and do not made any express holding about the

effect of eBay on this specific case or this circuit’s presumption of irreparable harm

more generally. We conclude that, in any case, the district court’s findings of facts

were sufficient to rebut any presumption of irreparable harm that may have

applied.

      Two particularly salient facts found by the court flatly contradict Hoop

Culture’s claim that it will suffer irreparable harm without an injunction. First,

Gap expected to sell out of the shirts bearing the phrase EAT SLEEP BALL in

October 2015, about two months after the evidentiary hearing and around the time

Hoop Culture filed its initial appellate brief with this Court. Hoop Culture has not




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challenged this finding as clearly erroneous. So, as far as we are aware, Gap is not

currently selling any shirt allegedly bearing Hoop Culture’s mark.

       Second, Gap had no future plans to sell shirts bearing the phrase EAT

SLEEP BALL once it sold out. In these circumstances, an injunction barring Gap

from selling shirts it does not have and has no plans to sell in the future would be

unnecessary, at best, and would do nothing to prevent further harm to Hoop

Culture. To the extent that Hoop Culture has been irreparably harmed by Gap’s

past actions, past harm is not a basis for preliminary injunctive relief, which

requires a showing of likely future injury if an injunction does not issue. See

Siegel, 234 F.3d at 1176-77.

       In sum, the district court did not abuse its discretion in finding that Hoop

Culture did not meet its burden of showing a likelihood of irreparable injury. 3

Because proof of irreparable injury “is an indispensable prerequisite to a

preliminary injunction,” id. at 1179, Hoop Culture is not entitled to a preliminary

injunction at this time, even assuming it is likely to succeed on the merits, which is

an issue we do not reach. Accordingly, we affirm the district court’s order denying

preliminary injunctive relief to Hoop Culture.

       3
         Hoop Culture also argues that the district court erred in excluding evidentiary materials
that Hoop Culture sought to introduce at the evidentiary hearing but did not submit with its
motion for a preliminary injunction. However, the district court did not abuse its discretion in
excluding these materials because a local rule provides that “[s]ervice of all papers and affidavits
on which the moving party intends to rely must be served with the motion” for a preliminary
injunction, U.S. Dist. Ct. for the M.D. Fla., Local Rule 4.06(b)(2), and Gap had no opportunity to
prepare a response to materials it learned of for the first time at the evidentiary hearing.
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AFFIRMED.




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