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,
________________________

Kirklan
_______

Ellis, Richard S. Nicholson, and Cooke, Clancy & Gruenthal, L.L.

_____ _____________________
_________________________________
were on brief for appellant.
Alice E. Richmond,
_________________

with whom Ann Pauly and Richmond, Pauly & A

_________
___________________

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

Dr. Johnson-Powell had

on

her curriculum

violation

falsely claimed, both under

vitae, that

she

the

Trademark

Act

1114(1)(a)-(b)

(the

"Lanham

Act").

agreement that

Dr.

such

of

court

was unlikely to

asserts on appeal

to grant

the

a the

oath and

was ABPN-certified,

of

1946,

15

While

seemingly

Johnson-Powell had,

infringements,

believed she

in its complaint that

denied

U.S.C.

in fact,

relief

preliminary injunction.

in

committed

because

infringe in the future.

that the district court

in

it

ABPN

erred in refusing

While the

case is

close, we cannot say that the district court acted beyond its

discretion; hence we affirm.

I.

The facts are

BACKGROUND

largely undisputed.

ABPN is

a non-

profit Illinois corporation that certifies psychiatrists

neurologists

as

specialists qualified

and

in

their respective

owns a federal

registration for

fields.1

ABPN secured and

the mark:

"The American Board of Psychiatry

and Neurology."

____________________

1.

ABPN certification is optional and is distinct from state

licensure.

-2-

ABPN authorizes physicians

ABPN's

requirements

and

to use its mark if

received

an ABPN

they have met

certificate

or

license to use the mark.

Dr.

Johnson-Powell is

prominent physician

psychiatrist who has often testified as an expert

court.

ABPN,

was

Although Dr. Johnson-Powell

she claimed under

ABPN-certified.

and

witness in

is not certified by the

oath on several

Dr. Johnson-Powell

occasions that she

first

made

such

statements

1991.

In

at a

deposition and

trial testimony

1993, after Dr. Johnson-Powell said

certified

in

deposition,

certification status at

whether

during

she

trial.

was actually

misstated

her

testimony.

In

status

at

lawyer

she was ABPN-

challenged

She proclaimed

certified.

and

her

ignorance of

In 1995

deposition

in

she

again

during

trial

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

assertions in November of 1995.

about her

actions.

of

Dr.

Johnson-Powell's

ABPN wrote to her, inquiring

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

infringement

District

brought

on December

Court

for

the

this

suit

17,

1996

District

for

in

of

certification

the

United

Massachusetts.

mark

States

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

Johnson-Powell, who did

affidavit

evidence

and

not personally appear,

seen

Dr.

tendered her

promising not to repeat her infringing conduct and

attaching a redacted resume that did not

to ABPN

testimony;

certification.

patients

She

nor provided

include a reference

also asserted that she

expert

witness

has not

services since

1995.

Upon completion of the hearing, the district

denied

court

ABPN's request

reasoned

that,

for a

preliminary

although ABPN

injunction.

demonstrated

court

The

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.

the

district

ABPN brings this

court's

order

interlocutory appeal from

denying

its

request

for

preliminary injunction.2

II.

STANDARD OF REVIEW

In trademark actions as in others, courts of appeal

will

reverse

district court's

denial

of

a preliminary

____________________

2.

Our

appellate

jurisdiction

1292(a)(1), which provides for

orders

of the

district

rests

upon

U.S.C.

appeals from "[i]nterlocutory

courts . . . granting,

modifying, refusing or dissolving injunctions."

-4-

28

continuing,
Id.
___

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

________________

1986) (citing

6, 12-13 (1st Cir.

Planned Parenthood League of Mass.

____________________________________

1006, 1009

(1st Cir.

1981)).

legal standard, however,

discretion.

v.

Bellotti, 641
________

Application of

is never within a

See Camel Hair, 799

___ __________

F.2d

an improper

district court's

F.2d at 13.

Similarly, a

district

court

abuses

its

discretion

applies the law to particular facts.

of

fact made

as

part

of the

Id.
___

district

if

it

incorrectly

We review findings

court's denial

injunctive

relief under a

Keds Corp.
__________

v. Renee Int'l Trading Corp., 888 F.2d

__________________________

(1st

Cir. 1989).

Absent

clearly erroneous standard.

clear error

or

an

injunction merely because we

grant the injunction had we

Celebrity, Inc. v.
_______________

1959).

See
___

215, 222

other abuse

discretion, we will not reverse a district court's

of

of

denial of

would have been inclined to

heard the matter ourselves.

Trina, Inc., 264 F.2d 956,

___________

See
___

958 (1st Cir.

III.

As

mark.

noted,

DISCUSSION

ABPN has

registered

registered certification

protection

as

a trademark.

registrant may obtain

its mark and

See
___

mark

15

its certification

receives the

U.S.C.

1054.

same

an injunction to preserve the value of

to prevent future infringement.

-5-

See 15 U.S.C.
___

1114, 1116.

protect its

Here, ABPN sought a preliminary injunction to

mark in

the interim

before the

district court

could finally resolve ABPN's claims for damages and permanent

injunctive relief.

We

determining

trademark

have

stated

that

whether to issue

action,

should

court,

when

a preliminary injunction

in a

weigh

district

four

factors:

(i)

the

plaintiff's likelihood of success on the merits; (ii) whether

the

plaintiff

injunction

is

risks

not

suffering

granted;

irreparable

(iii)

whether

harm

such

if

the

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.

court

from

1995).

Here, in denying

mentioned two of

the

bench.

It

likelihood of success

indications

are

infringement

in

undeniable."

very

these four

relief, the district

factors in

indicated that

on the merits

strong

the past[,]

Nevertheless,

that

so

in

it

strong

by noting that:

"[t]he

found

there

strong

has

as to

denying

injunction it said it "[did] not think

remarks made

been

be

an

perhaps

preliminary

that there has been a

-6-

showing

that there is

likely irreputable [sic]

harm in the

future."3

ABPN asserts that

respects.

First, it contends

the district court erred

in two

that the district court abused

its discretion by relying upon an incorrect legal standard to

determine whether

ABPN would suffer irreparable harm without

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

irreparable harm, ABPN relies on

that a trademark

success

harm.

cases in which we have held

plaintiff who demonstrates a

on the merits

of

creates a presumption

likelihood of

of irreparable

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

injunction on
reaction."

an assessment
It

made

no

the denial of the preliminary

of Dr. Johnson-Powell's

mention

injunction on the public interest.

-7-

of

the

impact

likely
of

the

15

(emphasis added).

irreparable

Reducing

the

standard of

proof for

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."

ABPN

Camel Hair, 799 F.2d at 15.

__________

argues

that

the district

discretion

by

requiring

irreparable

harm and imminent

the district court,

it

to

court

abused its

demonstrate

infringement.

We

"likely"

agree with

however, that, while certification

and trademark infringements

may be presumed without

mark

more to

cause irreparable harm, there is no parallel presumption that

because

will

such infringements have

inevitably

plaintiff

be

retained

occurred in the

continued into

the

the

burden

ordinary

past, they

future.4

of

Rather,

showing

sufficient likelihood that the infringing conduct would occur

in the

future so as to give rise

to an enjoinable threat of

irreparable harm.

prospect

Here,

the

that

there

infringement."

It

court

determined

would

be

that

[future]

is clear from Camel Hair

__________

there

was "no

occasions

of

itself that the

____________________

4.

In

saying

infringing
strongly

this,

conduct

we

will

the likelihood

do

not

ordinarily

question
imply

of continued

that

previous

often

very

future violations,

and

thus may

well

irreparable harm.
amount to a
factual

be
We say

persuasive

evidence

may

threatened

merely that such evidence does not

legal presumption; it is proof

evidence,

of

be

rebutted

by

that, like other

other

facts

and

circumstances.

-8-

court made no

evidence

as

infringement.

legal error in considering whether

whole

One of

indicated

the

threat

Camel Hair
__________

or not the

of

defendants

continued

who had

previously

sold infringing

racks prior to

that

garments

removed them

from its

the preliminary injunction hearing.

Against

defendant, we upheld the

interlocutory

injunction,

stating

likelihood of [that particular

to [the plaintiff] at the

was

being considered."

district court's denial of an

that

"there

was

no

defendant] causing any injury

time the request for an injunction

Camel Hair, 799

___________

F.2d at 13.

The

purpose of interlocutory injunctive relief is to preserve the

status

quo pending final

injury to the plaintiff

or set an example.

Properties, Inc.,
_________________

Acierno v. New

relief and to

prevent irreparable

not simply to punish past misdeeds

See CMM Cable Rep., Inc. v. Ocean Coast

___ ____________________
____________

48

Castle

F.3d

618,

County, 40

620

F.3d

(1st

Cir.

645, 647

(3d

1995);

Cir.

_______

___________________

1995).

be

Absent

none of

prevent: no

reputation.

district

likelihood of future infringement,

the

ill

effects that

loss of future

Thus,

court's

injunction seeks

profits, no loss of

contrary

inquiry

an

to

into

ABPN's

the

there can

goodwill or

suggestion,

question

to

of

the

future

irreparable injury was proper.

ABPN contends that

grant

Camel Hair
__________

a preliminary injunction in

plaintiff

demonstrates

even

-9-

commands courts

to

a trademark action if the

"slight

likelihood"

of

irreparable

injury.

The district court's use of "likely" is

said to have

signaled use

here.5

while

But

infringement may

say

that

even

of too high

"slight likelihood"

well warrant injunctive

district

injunction turns here

judge's

discretion

on such nuances

"slight likelihood" standard

reference to

a standard of

whether the

proof

of

future

relief, we

cannot

to

withhold

of phraseology.

an

The

was discussed in Camel Hair in

___________

act of

infringement would

itself

create

irreparable

likelihood of

profits,

its

very

to

goodwill, and

be compensated."

whether

future.

nature,

irreparable harm

there

As we

trademark

because the

was

have said

infringement

attendant loss

reputation cannot

quantified, and, thus, the

at 640.

not

infringement in the

elsewhere, "[b]y

results in

harm,

of

be satisfactorily

trademark owner cannot adequately

Societe Des Produits Nestle, S.A., 982 F.2d

_________________________________

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

or not certain that they won't occur."

won't occur

Presumably, the judge

meant that he found little likelihood that Dr. Johnson-Powell

would

infringe

buttressed by

in

the

near

the fact that,

analogized this matter

future.

This

reading

in the same breath,

to Camel Hair by noting

__________

is

the judge

that in both

cases

there was

"no prospect that

there would

be [future]

occasions of infringement from the defendant."

The judge
there

also noted, however,

[was] a showing

that he did

that [the infringing]

not "think

behavior [was]

likely to continue," and stated that the general requirements

of equity demand

that a plaintiff "show the

are about

to suffer some

that the

relevant question

likelihood they

irreparable harm."
for the

court was

He

also found
"whether the

harm is likely to occur or not."

-10-

injunction in

trademark case

when

a realistic

risk

of

future

infringement

injunction)

(within

has been

the

time

demonstrated, but

covered

we

by

cannot say

the

the

district court misunderstood this point.

To

infringing

faith.

be sure, there was ample

evidence here of past

conduct, not to mention conduct indicative of bad

As mentioned in note 4, supra, such evidence, if not

_____

rebutted, may

give rise to

a strong inference

infringing acts will occur in the future.

say that

assurances

defendant can

sufficient,

in

never

Even so, we cannot

take actions

the face

of

such

convince a court that she will not commit future

Our system leaves

that further

it primarily in the hands

and

provide

evidence, to

violations.

of the district

court to ascertain whether the danger of future harm has been

adequately established so

injunction.

In arguing for a

this, injunctive relief

of law, ABPN points to

district

as to warrant the protection of an

court's

rule that, in a situation like

is necessarily required as

our language in Camel Hair

__________

finding

that

defendant's labels were literally

it

that

warranted

Camel Hair, 799 F.2d at

__________

But in that aspect of Camel Hair,

__________

-11-

that "the

probable

false in itself

the grant of the injunction sought."

16.

was

a matter

it is clear that the

district judge found,

and that we accepted,

that infringing

conduct would continue unless enjoined.6

We,

therefore,

court committed legal

_____

reject

ABPN's

argument that

error in denying injunctive

the

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

___________

probability

that

district

further

court found

marketing

of

"there was

[the

infringing

product] would occur if an injunction was not issued."

Hair, 799 F.2d
____

at 9; see also
___ ____

Keds Corp., 888

__________

F.2d at

Camel
_____
217

(noting

that defendant

remaining inventory

had

refused

aff'd, 70
_____

stop

selling

of the infringing product);

IBC/USA (Publications), Inc.,

______________________________
Mass.),

to

F.3d

886 F.

206 (1st

Supp.

Cir.

its

Donoghue v.
________
947,

953 (D.

1995) (noting

that

defendant continued its infringing activity).

7.

Dr.

Johnson-Powell

asserted, inter
_____

filed

alia, that:
____

since 1995; (2) she has not

since

1995;

(3)

inadvertent; (4) she

the

an affidavit,
(1) she

has not

in

which

she

seen patients

circulated her infringing resume

false

claim

on

her

tried to locate and destroy

resume

was

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

Electronics Corp. of Am.

_________________________

(1st Cir.

that

1970).

"[w]e might

In that

accept

statement in

v. Honeywell, Inc., 428

________________

F.2d 191

earlier case, we stated

in dicta

the

principle that

so

preliminary injunction

is concerned,

will always suffice."

______

Id. at 195 (emphasis added).

___

Design,
______

voluntary

we modified

our

statement

far as

. . . voluntary reform

in

Honeywell
_________

In Pic
___

so

that

reform will always suffice to prevent injunctive

___________________________

relief

only

reform."

if

it

Pic Design,
__________

is

"irrefutably

demonstrated,

436 F.2d at 809.

It

total

does not follow,

however, that a district court may, in its discretion, credit

a claim of reform only

Our affirmance

of an

only that a court does

by

granting an

voluntarily

goes

if it meets the Pic Design

__________

injunction in

that case

when

the

nonmoving

abated its infringing activity.

too far

demonstrated

not necessarily abuse its

injunction

in denying

an

injunction in

standard.

discretion

party

has

Whether a court

the absence

of

something less than total reform is a fact-specific matter.

ABPN argues that

evidence

would not

for a

court to

the record contains

conclude

engage in infringing

that Dr.

conduct in the

insufficient

Johnson-Powell

near future.

As ABPN correctly

court's

denial of

notes, our decision to affirm the district

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

infringement

remarked

is

that

agree

very

the

infringement was

strong.

evidence

"so strong

The district court

that

the

The

district

of Dr.

as to

evidence

of

court itself

Johnson-Powell's

be perhaps

also thought her affidavit

past

past

undeniable."

was "probably

not true," apparently in respect to the claimed "inadvertence

of the error

the

on the resume."

It can also be

inferred from

record that Dr. Johnson-Powell violated past promises to

reform her

proffer

conduct.

Moreover, Dr.

her affidavit until

Johnson-Powell did

after the

court had

not

entered a

temporary restraining order, timing argued by ABPN to suggest

lack of sincerity.

does not

defendant

rise to the

Clearly, Dr. Johnson-Powell's behavior

level of reformation displayed

in Camel Hair; on
___________

this record,

undoubtedly have issued preliminary

been so

and

222.

inclined.

for abuse of

Our

the court

See
___

clear error

Keds Corp., 888

__________

We cannot say these standards were reached here.

-14-

could

injunctive relief had it

review, however, is for

discretion.

by the

F.2d at

Despite its

skepticism about

Johnson-Powell's

affidavit,

found

character

that

misstatements

infringement

the

rendered

remote.

the

of

the

district

Dr.

court

of Dr.

plausibly

Johnson-Powell's

possibility

Serving as

disseminating a resume, Dr.

some aspects

past

of

recurring

courtroom

expert and

Johnson-Powell's two methods

of

infringement, are "not like someone offering goods for sale,"

which could

occur at any

determination was Dr.

time.

In support of

the court's

Johnson-Powell's affidavit of

January

8, 1997,

filed with

under penalty

future,

she

[herself]

indicated

has "no

being

and

unauthorized

American

of perjury, in

as

Psychiatry

the court by

and signed

which she stated that,

intention

to and

certified

Neurology

her attorneys

by

and

The

will

will

not represent

American

not

in the

engage

Board

of

in

any

use of the registered certification mark of The

Board of

Psychiatry

that she

testifying as an

was a copy of her

no

and

Neurology."

longer engages

expert witness.

in

She

the business

Along with the

also

of

affidavit

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

matter pending final

court retains jurisdiction

determination of the action

over this

brought by

ABPN.

Dr.

Johnson-Powell

unquestionably aware

and

her

that any violation

attorneys

during that

are

period

would constitute a serious breach of faith with the court and

would erode

any hopes defendant

successful outcome.

request

ABPN, moreover,

final injunctive relief.

positioned than

matters.

may continue to have

ourselves to

will still

for a

be able

to

District courts are better

observe the

nuances of

these

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

discretion

infringe

clearly erred

or

otherwise abused

its

in concluding that the defendant will not further

ABPN's mark

in the

future period

preliminary injunction would operate.

during

which a

Affirmed.
________

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