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Drafting an Enforceable Injunction Requires Specificity, Plain English

I’ll be speaking at the “Fed Court Boot Camp Conference: How to Practice in Federal Court” CLE on Dec. 2.

One of my topics is preliminary injunctive relief. One thing I’m sure to address is the content of the injunction.

Federal Rule of Civil Procedure 65 controls. Among other things, it states that “[e]very order granting an injunction and every restraining order must … describe in reasonable detail — and not by referring to the complaint or other document — the act or acts restrained or required.”

Makes sense. The persons subject to the order need to know what it is they can and can’t do.

In trademark infringement cases, one would think that would include a prohibition on infringing the plaintiff’s trademark. But that’s not specific enough. Nor is it enough direction to tell the defendant not to use trademarks that are “confusingly similar” to plaintiff’s trademarks.

That’s what the temporary restraining order said in Reno Air Racing Ass’n., Inc. v. McCord, 452 F.3d 1126 (9th Cir. 2006). It enjoined the defendant from “making, manufacturing, [or] distributing … any goods, packaging or any other items which bear the [plaintiff’s trademarks], or any confusingly similar variations thereof.” Indeed, that’s what a great many orders in trademark infringement cases say. But the Ninth Circuit rejected that language as too vague.

Reno Air serves as a good reminder for those drafting proposed injunctions, at least in the Ninth Circuit.

“Ultimately, there are no magic words that automatically run afoul of Rule 65(d), and the inquiry is context-specific. ‘[T]he fair notice requirement of Rule 65(d) must be applied ‘in the light of the circumstances surrounding [the order’s] entry.’ This case not only points out the pitfall of incorporating documents by reference in a TRO but also the hazard of failing to identify with particularity the enjoined conduct in conjunction with specific identification and description of the trademarks. The recipient of a TRO, which usually takes effect immediately, should not be left guessing as to what conduct is enjoined. The benchmark for clarity and fair notice is not lawyers and judges, who are schooled in the nuances of trademark law. The ‘specific terms’ and ‘reasonable detail’ mandated by Rule 65(d) should be understood by the lay person, who is the target of the injunction. This is a circumstance, among many in the legal field, that cries out for ‘plain English.’

“Here, the TRO was issued the same day the action commenced, and the parties had no prior litigation history. … [T]he TRO’s prohibition — i.e. enjoining infringement of ‘the trademarks set forth in Exhibit F … or any confusingly similar variations thereof’ — would certainly have left a lay person scratching his head in confusion. The TRO failed to meet even the most minimal fair notice requirement.”

These findings led the Ninth Circuit to find the order, as drafted (likely by the plaintiff’s attorney), was not enforceable. Not a good thing if you’re back in court trying to get an order of contempt against a noncomplying defendant.

The lesson when drafting a proposed injunction is to be specific and write in plain English — good drafting tips in almost any context.

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Reader Comments (2)

So as a practical matter, how SHOULD a court draft an injunction that is intended to keep the defendant from using any "confusingly similar" mark? List all of the (potentially infinite) possibilities? Describe parameters of sight, sound, and meaning that could not be crossed? Sounds like a tall order to get a meaningful anti-confusion injunction into suitably clear and inclusive language.
November 10, 2011 | Unregistered CommenterBob Cumbow

Good, practical question. The trick is in defining what conduct you want stopped. If you have BRAND X, the order would start with a prohibition on the defendant's using any trademark that contains "BRAND X" in connection with your specified goods or services. To expand beyond that, you should identify the defendant's mark(s) that triggered the lawsuit. Then expand to specific iterations that you want prohibited. The trick isn't identifying every variation you can think of; it's to give the defendant a flavor for what's out-of-bounds. In other words, the task in drafting the proposed injunction is to put the defendant on reasonable notice as to what conduct is prohibited, taking into account they're probably not trained as a lawyer and may not be very well educated at all. Would someone with an 11th grade education know what a "confusingly similar variation" is? Probably not. So lay it out for them as best you can in plain English. The more specific you are, the better your chances are of avoiding inadvertent violations and enforcing the injunction in a future motion for contempt.

It's a challenge.


P.S. If anyone has any thoughts on the subject or best practices to suggest, don't hold back!
November 10, 2011 | Registered CommenterMichael Atkins

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