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Trademark Infringement: Amazon.com Does Not Have to Put Out the Fire

Addressing an interlocutory appeal, the US Court of Appeals for the 11th Circuit affirmed a district court’s denial of a preliminary injunction against Amazon.com for trademark infringement, agreeing that the plaintiff’s motion was too little, too late. Wreal, LLC v. Amazon.com, Inc., Case No. 15-14390 (11th Cir., Oct. 28, 2016) (Rosenbaum, J).

Wreal is an online internet protocol television (IPTV) service provider. Since 2007, Wreal has been streaming adult content through its website, FyreTV.com, and proprietary set-top boxes (STBs). The STBs, called the “FyreTV box” and the “FyreBoXXX,” have been sold exclusively through Wreal’s website to customers that sign up for a FyreTV account. Wreal registered the trademarks “FyreTV” and “FyreTV.com” with the US Patent and Trademark Office in October 2008.

In 2011, Amazon started using the mark “Fire” in connection with its Kindle Fire tablet. Amazon continued the use of the “Fire” brand, along with its “Amazon” house mark, as it launched several new generations of mobile devices and internet appliances. In April 2014, Amazon launched its STB, which it markets as the “Amazon Fire TV.” Amazon was aware of Wreal’s “Fyre TV” mark when it launched Fire TV but did not contact Wreal before launching its service.

Wreal filed a complaint two weeks after Amazon launched its STB, alleging trademark infringement and unfair competition. Relying on a theory of reverse-confusion, Wreal asserted that Amazon’s dominant market position would likely cause consumers to mistakenly believe that Amazon was actually the source of Wreal’s Fyre TV or FyreBoXXX. After filing its complaint, Wreal conducted no discovery, made only routine case management filings and waited five months to move for a preliminary injunction.

Wreal was on notice that to succeed on its preliminary injunction motions, it needed to explain its five-month delay, yet it never provided the district court with a reason. The district court found that Wreal’s unexplained five-month delay in seeking a preliminary injunction fatally undermined any showing of irreparable injury, one of the four requirements for obtaining accelerated relief. The district court noted that a plaintiff concerned about a harm that it truly believed to be irreparable would and should act swiftly to protect itself. Wreal appealed. 

The 11th Circuit affirmed the district court’s denial of a preliminary injunction, describing Wreal’s pace in filing its motion as “someone out on a meandering evening stroll rather than someone in a race against time.” A delay in seeking a preliminary injunction of even only a few months, although not necessarily fatal, militates against a finding of irreparable harm. Consistent with its sister circuits, the 11th Circuit found that a party’s failure to act with speed or urgency in moving for a preliminary injunction necessarily undermines a finding of irreparable harm. 

© 2021 McDermott Will & EmeryNational Law Review, Volume VI, Number 334
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About this Author

Jodi Benassi, Intellectual Property Litigator, McDermott Will Emery Law Firm
Associate

Jodi Benassi* focuses her practice on intellectual property litigation.

Jodi has drafted and negotiated technology and commercial contracts; analyzed non-practicing entities (NPE), NPE litigation andinter partes reviews to reduce risks and costs of patent litigation; and assessed startups and individual inventors for preemptive patent purchase visibility. She previously held several executive positions in the technology sector where she managed corporate expansions into the Latin America and European cable and telecommunication markets...

650-815-7561
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