USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
10. Remedies 10.1 Injunctive Remedies Trade mark and copyright owners can seek prelimi - nary and permanent injunctive relief. Permanent Injunction A court can order an injunction to restrain violation of trade mark rights according to the principles of equity on terms it deems reasonable. To do so, the court must find that the trade mark owner has suffered or will suffer an irreparable injury, there are no other suf - ficient remedies available at law, monetary damages are inadequate to compensate for the injury, the bal - ance of hardships between the plaintiff and defend - ant weighs in favour of the plaintiff, and the injunc - tion would not harm the public interest. A plaintiff seeking any such injunction is entitled to a rebuttable presumption of irreparable harm. Such presumption may be rebutted by showing, for example, the plaintiff unreasonably delayed in seeking relief. Preliminary Injunction A court may order a preliminary injunction to imme - diately restrain an infringement where there is a like - lihood of irreparable harm unless the injunction is issued pending trial. Courts consider the equities including the extent of the harm, the likelihood of ultimately prevailing at trial, and any public or private interests impacted by the injunction. A plaintiff seek - ing a preliminary injunction is entitled to a rebuttable presumption of irreparable harm if there is a finding of likelihood of success on the merits for the movant in the case of a motion for a preliminary injunction or temporary restraining order. A movant may have to post a bond to address potential harm suffered by defendant if the injunction is later found wrongful. Temporary Restraining Order A temporary restraining order is a short-term injunc - tion only available in limited “emergency” situations in order to preserve the status quo pending a pre - liminary injunction hearing. A high standard of proof is required to demonstrate why relief of a limited record is required. An ex parte injunction or seizure order is issued without notice to the alleged infringer on an emergency basis. They are only available in lim - ited situations, such as counterfeiting cases, where,
purposes. In general, “transformative” uses are more likely “fair”. • Nature of the work, including whether the work is published or unpublished and whether it is more factual or more creative. • Amount and substantiality of the portion used in relation to the work as a whole. In general, the larger the amount of the work or more qualitatively important, the less likely it will be fair. • Effect of the use upon the potential market for or value of the work. If the use is likely to substitute for the copyrighted work or harm the market, this factor is likely to weigh against fair use. Parody is “use of some elements of a prior author’s composition to create a new one that, at least in part, comments on [and mimics] that author’s work” ( Campbell v Acuff-Rose , 510 U.S. 569, 580-81). Satire is the use of one copyrighted work to comment on something else. See Warhol v Goldsmith , 598 U.S. 508, 530-31 (2023) (distinguishing parody and satire). Parody and satire, like any other uses, are subject to the relevant fair use factors and judged case by case. See Dr. Seuss v ComicMix , 983 F.3d 443 (9th Cir. 2020). 9.3 Exhaustion Trade Mark The US generally applies the first sale doctrine to resale of items that bear a trade mark. Once an item bearing a mark is lawfully sold, the trade mark owner cannot restrict its resale and is immune from infringe - ment liability. However, there are exceptions. For example, if a party resells an item that has been modi - fied so that it is materially different, the doctrine does not apply. It also does not apply if the reseller holds itself out as related to the owner of the trade mark. Copyright The US applies the first sale doctrine to lawfully acquired, physical copies of copyrighted works. Under Section 109, once a copyright holder has authorised the sale or distribution of a particular copy of a work, the owner of that particular sold copy is entitled, with - out the authority of the copyright owner, to resell or otherwise dispose of that physical copy.
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