
USCA1 Opinion

	




                              UNITED STATES COURT OF APPEALS                                FOR THE FIRST CIRCUIT                                       ________        No. 97-1289                  AMERICAN BOARD OF PSYCHIATRY AND NEUROLOGY, INC.,                                Plaintiff, Appellant,                                          v.                             GLORIA JOHNSON-POWELL, M.D.,                                 Defendant, Appellee.                                 ____________________                     APPEAL FROM THE UNITED STATES DISTRICT COURT                          FOR THE DISTRICT OF MASSACHUSETTS                  [Hon. George A. O'Toole, Jr. U.S. District Judge]                                               ___________________                                 ____________________                                        Before                                 Stahl, Circuit Judge,                                        _____________                     Campbell and Bownes, Senior Circuit Judges.                                          _____________________                                 ____________________            Roibin  J.  Ryan with  whom  Christopher  B. Sullivan,  Kirkland &            ________________             ________________________   __________        Ellis, Richard S.  Nicholson, and Cooke,  Clancy & Gruenthal,  L.L.P.,        _____  _____________________      ___________________________________        were on brief for appellant.            Alice E. Richmond,  with whom Ann Pauly and Richmond, Pauly & Ault            _________________             _________     ______________________        LLP, were on brief for appellee.        ___                                 ____________________                                   OCTOBER 23, 1997                                 ____________________                      CAMPBELL, Senior Circuit Judge.  Plaintiff American                                ____________________            Board of Psychiatry and Neurology, Inc. ("ABPN") appeals from            the  district court's denial  of a preliminary  injunction to            order Dr. Gloria Johnson-Powell to desist from infringing its            certification  mark.  ABPN had alleged  in its complaint that            Dr. Johnson-Powell had  falsely claimed, both under  oath and            on  her curriculum  vitae, that  she  was ABPN-certified,  in            violation  of   the  Trademark  Act  of  1946,  15  U.S.C.               1114(1)(a)-(b)  (the  "Lanham  Act").    While  seemingly  in            agreement that  Dr.  Johnson-Powell had,  in fact,  committed            such  infringements,  the  court  denied  relief  because  it            believed she  was unlikely to  infringe in the future.   ABPN            asserts on appeal  that the district court  erred in refusing            to grant  a the  preliminary injunction.   While the  case is            close, we cannot say that the district court acted beyond its            discretion; hence we affirm.                                    I.  BACKGROUND                      The facts are  largely undisputed.  ABPN is  a non-            profit Illinois corporation that certifies psychiatrists  and            neurologists  as  specialists qualified  in  their respective            fields.1   ABPN secured and  owns a federal  registration for            the mark:  "The American Board of Psychiatry  and Neurology."                                            ____________________            1.  ABPN certification is optional and is distinct from state            licensure.                                         -2-            ABPN authorizes physicians  to use its mark if  they have met            ABPN's  requirements  and  received  an ABPN  certificate  or            license to use the mark.                      Dr.  Johnson-Powell is  a  prominent physician  and            psychiatrist who has often testified as an expert  witness in            court.   Although Dr. Johnson-Powell  is not certified by the            ABPN,  she claimed under  oath on several  occasions that she            was  ABPN-certified.    Dr. Johnson-Powell  first  made  such            statements  at a  deposition and  during  trial testimony  in            1991.  In  1993, after Dr. Johnson-Powell said  she was ABPN-            certified   in  a   deposition,   a  lawyer   challenged  her            certification status at  trial.  She proclaimed  ignorance of            whether  she  was actually  certified.    In 1995  she  again            misstated  her  status  at  a  deposition  and  during  trial            testimony.  In  addition to her sworn testimony, Dr. Johnson-            Powell also distributed  a resume on which she  claimed to be            certified and even included a purported certification number.                      ABPN   first   learned  of   Dr.   Johnson-Powell's            assertions in November of 1995.  ABPN wrote to her, inquiring            about her  actions.   She replied that  a clerical  error had            caused the inadvertent inclusion of a certification number on            her resume and that she had remedied the error.                      ABPN  brought  this  suit  for  certification  mark            infringement  on December  17,  1996  in  the  United  States            District  Court  for  the  District  of  Massachusetts.    On                                         -3-            December  30, the court granted a temporary restraining order            ex parte against  Dr. Johnson-Powell.  On January  23 and 24,            1997, both parties attended a preliminary injunction hearing.            ABPN  presented  documentary   evidence  and  testimony;  Dr.            Johnson-Powell, who did  not personally appear,  tendered her            affidavit  promising not to repeat her infringing conduct and            attaching a redacted resume that did not  include a reference            to ABPN  certification.  She  also asserted that she  has not            seen  patients  nor provided  expert  witness  services since            1995.                      Upon completion of the hearing, the district  court            denied  ABPN's request  for a  preliminary  injunction.   The            court  reasoned  that,  although ABPN  demonstrated  a strong            likelihood that it would prevail on the merits, it had failed            to demonstrate a sufficient likelihood of irreparable harm in            the near future.  ABPN brings this  interlocutory appeal from            the   district  court's  order  denying  its  request  for  a            preliminary injunction.2                               II.  STANDARD OF REVIEW                      In trademark actions as in others, courts of appeal            will  reverse  a  district court's  denial  of  a preliminary                                            ____________________            2.  Our  appellate  jurisdiction  rests  upon   28  U.S.C.               1292(a)(1), which provides for  appeals from "[i]nterlocutory            orders  of the  district  courts . . . granting,  continuing,            modifying, refusing or dissolving injunctions."  Id.                                                             ___                                         -4-            injunction  only if the district court abused its discretion.            See Camel  Hair & Cashmere  Inst. of Am., Inc.  v. Associated            ___ __________________________________________     __________            Dry Goods  Corp., 799 F.2d  6, 12-13 (1st Cir.  1986) (citing            ________________            Planned  Parenthood League  of Mass.  v.  Bellotti, 641  F.2d            ____________________________________      ________            1006, 1009  (1st Cir.  1981)).    Application of  an improper            legal standard, however,  is never within a  district court's            discretion.   See Camel Hair, 799  F.2d at 13.   Similarly, a                          ___ __________            district  court  abuses  its  discretion  if  it  incorrectly            applies the law to particular facts.  Id.  We review findings                                                  ___            of  fact made  as  part  of the  district  court's denial  of            injunctive  relief under a  clearly erroneous standard.   See                                                                      ___            Keds Corp.  v. Renee Int'l  Trading Corp., 888 F.2d  215, 222            __________     __________________________            (1st  Cir. 1989).    Absent  clear error  or  other abuse  of            discretion, we will not reverse a district court's  denial of            an  injunction merely because we  would have been inclined to            grant the injunction had we  heard the matter ourselves.  See                                                                      ___            Celebrity, Inc. v.  Trina, Inc., 264 F.2d 956,  958 (1st Cir.            _______________     ___________            1959).                                   III.  DISCUSSION                      As  noted,  ABPN has  registered  its certification            mark.   A  registered certification  mark  receives the  same            protection  as  a trademark.    See  15  U.S.C.    1054.    A                                            ___            registrant may obtain  an injunction to preserve the value of            its mark and  to prevent future infringement.   See 15 U.S.C.                                                            ___                                         -5-               1114, 1116.  Here, ABPN sought a preliminary injunction to            protect its  mark in  the interim  before the  district court            could finally resolve ABPN's claims for damages and permanent            injunctive relief.                      We  have  stated   that  a  district   court,  when            determining  whether to issue  a preliminary injunction  in a            trademark  action,   should  weigh  four  factors:   (i)  the            plaintiff's likelihood of success on the merits; (ii) whether            the  plaintiff  risks  suffering  irreparable   harm  if  the            injunction   is  not  granted;   (iii)  whether  such  injury            outweighs the harm that injunctive relief would cause for the            defendant;  and (iv)  whether the  public  interest would  be            adversely  affected  by  granting or  denying  an injunction.            See Equine Techs., Inc. v. Equitechnology, Inc., 68 F.3d 542,            ___ ___________________    ____________________            544 (1st Cir.  1995).  Here, in denying  relief, the district            court  mentioned two of  these four  factors in  remarks made            from  the  bench.    It  indicated that  it  found  a  strong            likelihood of success  on the merits  by noting that:  "[t]he            indications   are  very  strong   that  there  has   been  an            infringement  in  the past[,]  so  strong  as to  be  perhaps            undeniable."     Nevertheless,  in   denying  a   preliminary            injunction it said it "[did] not think  that there has been a                                         -6-            showing  that there is  likely irreputable [sic]  harm in the            future."3                        ABPN asserts that  the district court erred  in two            respects.  First, it contends  that the district court abused            its discretion by relying upon an incorrect legal standard to            determine whether  ABPN would suffer irreparable harm without            a  preliminary injunction.   Second,  ABPN  asserts that  the            court clearly erred when it found that Dr. Johnson-Powell was            not likely to infringe ABPN's mark in the near future.            1.   Incorrect Legal Standard.                 ________________________                      To  support its  argument  that the  district court            used an incorrect legal standard to assess the likelihood  of            irreparable harm, ABPN relies on  cases in which we have held            that a trademark  plaintiff who demonstrates a  likelihood of            success  on the merits  creates a presumption  of irreparable            harm.  See,  e.g., Societe des Produits Nestle,  S.A. v. Casa                   __________  __________________________________    ____            Helvetia, Inc., 982 F.2d 633, 640 (1st Cir. 1992); Keds Corp,            ______________                                     _________            888 F.2d at  220; Camel  Hair, 799  F.2d at 14-15.   We  have                              ___________            declared in cases such as this one, involving literally false            statements, that "only a slight  likelihood of injury need be                                     __________________            shown to warrant injunctive relief."  Camel Hair, 799 F.2d at                                                  __________                                            ____________________            3.    The court did not expressly balance the relief afforded            by the injunction against the harm to the defendant; however,            it said  that it did not "rest  the denial of the preliminary            injunction on  an assessment  of Dr. Johnson-Powell's  likely            reaction."    It  made  no  mention  of  the  impact  of  the            injunction on the public interest.                                         -7-            15  (emphasis added).   Reducing  the  standard of  proof for            irreparable  harm in trademark actions reflects the intent of              43(a) of the Lanham Act, 15 U.S.C.   1125(a), "to encourage            commercial companies to act as the fabled 'vicarious avenger'            of consumer rights."  Camel Hair, 799 F.2d at 15.                                  __________                      ABPN  argues  that  the district  court  abused its            discretion   by   requiring   it  to   demonstrate   "likely"            irreparable  harm and imminent  infringement.  We  agree with            the district court,  however, that, while certification  mark            and trademark infringements  may be presumed without  more to            cause irreparable harm, there is no parallel presumption that            because  such infringements have  occurred in the  past, they            will  inevitably  be  continued into  the  future.4   Rather,            plaintiff  retained   the  ordinary   burden  of   showing  a            sufficient likelihood that the infringing conduct would occur            in the  future so as to give rise  to an enjoinable threat of            irreparable harm.                      Here,  the  court  determined  that  there  was "no            prospect  that   there  would   be   [future]  occasions   of            infringement."  It  is clear from Camel Hair  itself that the                                              __________                                            ____________________            4.  In   saying  this,  we  do  not  question  that  previous            infringing  conduct  will  ordinarily  imply      often  very            strongly     the likelihood  of continued  future violations,            and  thus may  well  be  persuasive  evidence  of  threatened            irreparable harm.  We say  merely that such evidence does not            amount to a  legal presumption; it is proof  that, like other            factual   evidence,  may  be  rebutted  by  other  facts  and            circumstances.                                         -8-            court made no  legal error in considering whether  or not the            evidence  as  a   whole  indicated  a  threat   of  continued            infringement.    One of  the  Camel Hair  defendants  who had                                          __________            previously  sold infringing  garments  removed them  from its            racks prior to  the preliminary injunction hearing.   Against            that  defendant, we upheld the  district court's denial of an            interlocutory   injunction,  stating   that  "there   was  no            likelihood of [that particular  defendant] causing any injury            to [the plaintiff] at the  time the request for an injunction            was  being considered."   Camel  Hair, 799  F.2d at 13.   The                                      ___________            purpose of interlocutory injunctive relief is to preserve the            status  quo pending final  relief and to  prevent irreparable            injury to the plaintiff    not simply to punish past misdeeds            or set an example.   See CMM Cable Rep., Inc. v. Ocean  Coast                                 ___ ____________________    ____________            Properties,  Inc.,  48   F.3d  618,  620  (1st   Cir.  1995);            _________________            Acierno v. New  Castle  County, 40  F.3d  645, 647  (3d  Cir.            _______    ___________________            1995).  Absent  likelihood of future infringement,  there can            be  none of  the  ill  effects that  an  injunction seeks  to            prevent: no  loss of future  profits, no loss of  goodwill or            reputation.     Thus,  contrary  to  ABPN's  suggestion,  the            district  court's   inquiry  into  the  question   of  future            irreparable injury was proper.                      ABPN contends that  Camel Hair  commands courts  to                                          __________            grant  a preliminary injunction in  a trademark action if the            plaintiff   demonstrates  even   a  "slight   likelihood"  of                                         -9-            irreparable  injury.  The district court's use of "likely" is            said to have  signaled use  of too high  a standard of  proof            here.5   But  while  even  a  "slight likelihood"  of  future            infringement may  well warrant injunctive  relief, we  cannot            say  that  a  district  judge's  discretion  to  withhold  an            injunction turns here  on such nuances  of phraseology.   The            "slight likelihood" standard  was discussed in Camel  Hair in                                                           ___________            reference to  whether the  act of  infringement would  itself            create  irreparable  harm,   not  to  whether  there   was  a            likelihood of  infringement in the  future.  As we  have said            elsewhere, "[b]y  its  very  nature,  trademark  infringement            results in  irreparable harm  because the  attendant loss  of            profits,  goodwill, and  reputation cannot  be satisfactorily            quantified, and, thus, the  trademark owner cannot adequately            be compensated."  Societe Des Produits Nestle, S.A., 982 F.2d                              _________________________________            at 640.    Certainly a  court should  grant an  interlocutory                                            ____________________            5.  At one point  the court stated that  "harm isn't presumed            if it's not certain or if it's certain that they  won't occur            or not certain that they won't occur."  Presumably, the judge            meant that he found little likelihood that Dr. Johnson-Powell            would  infringe  in   the  near  future.    This  reading  is            buttressed by  the fact that,  in the same breath,  the judge            analogized this matter  to Camel Hair by noting  that in both                                       __________            cases  there was  "no prospect that  there would  be [future]            occasions of infringement from the defendant."                   The judge  also noted, however,  that he did  not "think            there  [was] a showing  that [the infringing]  behavior [was]            likely to continue," and stated that the general requirements            of equity demand  that a plaintiff "show the  likelihood they            are about  to suffer some  irreparable harm."  He  also found            that the  relevant question  for the  court was  "whether the            harm is likely to occur or not."                                           -10-            injunction in  a  trademark case  when  a realistic  risk  of            future  infringement  (within   the  time   covered  by   the            injunction)  has been  demonstrated, but  we  cannot say  the            district court misunderstood this point.                      To  be sure, there was ample  evidence here of past            infringing  conduct, not to mention conduct indicative of bad            faith.   As mentioned in note 4, supra, such evidence, if not                                             _____            rebutted, may  give rise to  a strong inference  that further            infringing acts will occur in the future.  Even so, we cannot            say that  a  defendant can  never  take actions  and  provide            assurances  sufficient,  in  the face  of  such  evidence, to            convince a court that she will not commit future  violations.            Our system leaves  it primarily in the hands  of the district            court to ascertain whether the danger of future harm has been            adequately established so  as to warrant the protection of an            injunction.  In arguing for a  rule that, in a situation like            this, injunctive relief  is necessarily required as  a matter            of law, ABPN points to  our language in Camel Hair  that "the                                                    __________            district  court's   finding  that   it   was  probable   that            defendant's labels were literally  false in itself  warranted            the grant of the injunction sought."  Camel Hair, 799 F.2d at                                                  __________            16.   But in that aspect of Camel Hair,  it is clear that the                                        __________                                         -11-            district judge found,  and that we accepted,  that infringing            conduct would continue unless enjoined.6                      We,  therefore,  reject  ABPN's  argument that  the            court committed legal  error in denying injunctive  relief on                            _____            the ground that there was no prospect of future infringement.            2.   Findings of fact.                 ________________                      ABPN's  more potent argument  is that, even  if the            court used a permissible legal standard to assess irreparable            harm, the district court clearly erred in its factual finding            thatDr. Johnson-Powell would not infringe in the near future.                      ABPN  argues that the  court below should  not have            credited Dr. Johnson-Powell's claim of voluntary reformation7            because her conduct did not rise to the level of "irrefutably            demonstrated, total  reform."   Pic Design  Corp. v. Bearings                                            _________________    ________                                            ____________________            6.  In Camel  Hair, the  district  court found  "there was  a                   ___________            probability  that   further  marketing  of   [the  infringing            product] would occur if an injunction was not issued."  Camel                                                                    _____            Hair, 799 F.2d  at 9; see also  Keds Corp., 888  F.2d at  217            ____                  ___ ____  __________            (noting  that defendant  had  refused  to  stop  selling  its            remaining inventory  of the infringing product);  Donoghue v.                                                              ________            IBC/USA  (Publications),  Inc.,  886 F.  Supp.  947,  953 (D.            ______________________________            Mass.),  aff'd, 70  F.3d  206 (1st  Cir.  1995) (noting  that                     _____            defendant continued its infringing activity).            7.  Dr.  Johnson-Powell  filed  an affidavit,  in  which  she            asserted, inter  alia, that:  (1) she  has not  seen patients                      _____  ____            since 1995; (2) she has not  circulated her infringing resume            since  1995;   (3)  the  false   claim  on  her   resume  was            inadvertent; (4) she  tried to locate and destroy  all copies            of her misleading resume; (5) she has not served as an expert            witness, nor assisted an expert  witness, since 1995; and (6)            she will not claim to be Board certified in the future.                                           -12-            Specialty Co., 436  F.2d 804, 809 (1st Cir.  1971).  We think            _____________            ABPN reads Pic Design out of context.                       __________                      In Pic Design,  we limited an earlier  statement in                         __________            Electronics Corp.  of Am.  v. Honeywell,  Inc., 428  F.2d 191            _________________________     ________________            (1st Cir.  1970).  In that  earlier case, we stated  in dicta            that  "[w]e might  accept  the  principle that  so  far as  a            preliminary injunction  is concerned,  . . . voluntary reform            will always suffice."   Id. at 195 (emphasis added).   In Pic                 ______             ___                               ___            Design,  we modified  our  statement  in  Honeywell  so  that            ______                                    _________            voluntary  reform will always  suffice to  prevent injunctive                                   ___________________________            relief  only  if  it  is  "irrefutably  demonstrated,   total            reform."  Pic Design,  436 F.2d at 809.  It  does not follow,                      __________            however, that a district court may, in its discretion, credit            a claim of reform only  if it meets the Pic Design  standard.                                                    __________            Our affirmance  of an  injunction in  that case  demonstrated            only that a court does  not necessarily abuse its  discretion            by  granting an  injunction  when  the  nonmoving  party  has            voluntarily  abated its infringing activity.  Whether a court            goes  too far  in denying  an  injunction in  the absence  of            something less than total reform is a fact-specific matter.                      ABPN argues that  the record contains  insufficient            evidence  for a  court to  conclude  that Dr.  Johnson-Powell            would not  engage in infringing  conduct in the  near future.            As ABPN correctly  notes, our decision to affirm the district            court's  denial of  injunctive  relief  against  one  of  the                                         -13-            defendants in  Camel Hair rested  upon the good faith  of the                           __________            infringer and the infringer's rapid and credible cessation of            its infringing  activities.  See Camel Hair, 799  F.2d at 13.                                         ___ __________            ABPN argues that Dr. Johnson-Powell has not displayed similar            good  faith and  that  she is  extremely  likely to  infringe            again.                      We   must  agree   that   the   evidence  of   past            infringement  is  very  strong.   The  district  court itself            remarked  that  the  evidence  of Dr.  Johnson-Powell's  past            infringement was  "so strong  as to  be perhaps  undeniable."            The district court  also thought her affidavit  was "probably            not true," apparently in respect to the claimed "inadvertence            of the error  on the resume."   It can also be  inferred from            the  record that Dr. Johnson-Powell violated past promises to            reform her  conduct.   Moreover, Dr.  Johnson-Powell did  not            proffer  her affidavit until  after the  court had  entered a            temporary restraining order, timing argued by ABPN to suggest            a  lack of sincerity.  Clearly, Dr. Johnson-Powell's behavior            does not  rise to the  level of reformation displayed  by the            defendant  in Camel  Hair; on  this record,  the court  could                          ___________            undoubtedly have issued preliminary  injunctive relief had it            been so  inclined.  Our  review, however, is for  clear error            and  for abuse of  discretion.  See  Keds Corp., 888  F.2d at                                            ___  __________            222.  We cannot say these standards were reached here.                                         -14-                      Despite its  skepticism about  some aspects  of Dr.            Johnson-Powell's  affidavit,  the  district  court  plausibly            found  that  the  character  of  Dr.   Johnson-Powell's  past            misstatements   rendered   the   possibility   of   recurring            infringement  remote.    Serving as  a  courtroom  expert and            disseminating a resume, Dr.  Johnson-Powell's two methods  of            infringement, are "not like someone offering goods for sale,"            which could  occur at any  time.   In support of  the court's            determination was Dr.  Johnson-Powell's affidavit of  January            8, 1997,  filed with  the court by  her attorneys  and signed            under penalty  of perjury, in  which she stated that,  in the            future,  she  has "no  intention  to and  will  not represent            [herself]  as  being  certified  by  The  American  Board  of            Psychiatry  and  Neurology   and  will  not  engage   in  any            unauthorized  use of the registered certification mark of The            American  Board of  Psychiatry  and  Neurology."    She  also            indicated  that she  no  longer engages  in  the business  of            testifying as an  expert witness.   Along with the  affidavit            was a copy of her  curriculum vitae which no longer contained            her claim of certification.  Her attorneys, moreover, offered            to stipulate in writing that, "from this date forward, Gloria            Johnson-Powell will not represent  herself as being certified            by [ABPN] and will not engage in any unauthorized use of  the            registered certification mark."                                          -15-                      The district  court retains jurisdiction  over this            matter pending final  determination of the action  brought by            ABPN.      Dr.   Johnson-Powell   and   her   attorneys   are            unquestionably aware  that any violation  during that  period            would constitute a serious breach of faith with the court and            would erode  any hopes defendant  may continue to have  for a            successful outcome.  ABPN, moreover,  will still  be able  to            request  final injunctive relief.  District courts are better            positioned than  ourselves to  observe the  nuances of  these            matters.   Viewing all the evidence available to the district            court and the posture of  this appeal through the deferential            lens of the applicable standard of review, we cannot say that            the  district court  clearly erred  or  otherwise abused  its            discretion  in concluding that the defendant will not further            infringe  ABPN's mark  in the  future period  during  which a            preliminary injunction would operate.                      Affirmed.                       ________                                         -16-
