By James Juo.

Gerry Spence, who describes himself as “one of the greatest trial lawyers of our times,” founded a program called The Trial Lawyers College in 1994 to trail trial lawyers; but recently split with the College's board which splintered into the Spence Group and the Sloan Group, with the Sloan Group retaining control of The Trial Lawyers College.

The Spence Group then launched a competing program called Gerry Spence's Trial Lawyers College at the Thunderhead Ranch (which later changed its name to Gerry Spence Method at Thunderhead Ranch, but some use of the Trial Lawyers College name continued).

As part of the larger board dispute which includes state court litigation by the Spence Group seeking dissolution of the College and a declaratory judgment recognizing the Spence Group's control of the Board; the Sloan Group sued the Spence Group for trademark infringement in Wyoming federal court, which issued a preliminary injunction against the Spence Group from using “linguistic plays on words or various terms associated with The Trial Lawyers College.”

On appeal to the Tenth Circuit, the injunction was upheld but narrowed in The Trial Lawyers College v. Gerry Spence Trial Lawyers College at Thunderhead Ranch, No. 20-8038 (10th Cir. Jan. 27, 2022).

Two aspects of the injunction had been challenged by Mr. Spence; namely, whether there was irreparable injury, and the scope of the injunction.

In affirming the district court's finding of irreparable injury, the Tenth Circuit noted that although Congress had amended the Trademark Act in 2020 to expressly set forth a presumption of irreparable injury, this was after the preliminary injunction was issued by the district court. Before the passage of that Act, there is a presumption of irreparable injury only when the underlying statute “mandate[s] injunctive relief.” First W. Mgmt. Co. v. Malamed, 874 F.3d 1136, 1143 (10th Cir. 2017). Indeed, the U.S. Supreme Court's decision in eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006), had cautioned against categorical rules that would undermine the traditional four-part test for preliminary injunctions in cases involving intellectual property.

Without a presumption of irreparable injury, the Sloan Group had to prove there was a significant risk of harm that could not “be compensated after the fact.” DTC Energy Grp., Inc. v. Hirschfeld, 912 F.3d 1263, 1270 (10th Cir. 2018) (quoting First W. Cap. Mgmt. Co., 874 F.3d 1136, 1141 (10th Cir. 2017)).

Factors such as “the difficulty in calculating damages, the loss of a unique product, and existence of intangible harms such as loss of goodwill or competitive market position” may be considered. Dominion Video Satellite, Inc. v. Echostar Satellite Corp., 356 F.3d 1256, 1264 (10th Cir. 2004).

The Tenth Circuit held that the evidence permitted a reasonable factfinder to infer irreparable injury.

For example, there was testimony of the Sloan Group's efforts including the registration of trademarks, investment in branded merchandise, and restrictions on use of the Trial Lawyers College's name when alumni gave presentations.

The Sloan Group also pointed to five instances of continued use of the words “Trial Lawyers College” (or variation thereof) by the Spence Group in a manner that was likely to cause confusion:

1. The “GerrySpenceTrialLawyersCollege@Thunderhead Ranch” listserv;
2. Video where the Spence Group referred to its own program as the “Trial Lawyers College” was still available on YouTube;
3. Ranch owned by the Spence Group used the name “Trial Lawyers College”;
4. The Spence Group publicly promoted a presentation made by a member of its group, which identified the member as “TLC's director of curriculum and staff training”; and
5. The Spence Group used Instagram for a post that used the hashtag “#triallawyerscollege.”

“Taken as a whole, the evidence provided reasonable support for the finding of a risk to the College's reputation and goodwill.”

The harm from a likelihood of confusion can be difficult to quantify. See Med. Shoppe Int'l, Inc. v. S.B.S. Pill Dr., Inc., 336 F.3d 801, 805 (8th Cir. 2003) (“Harm to reputation and goodwill is difficult, if not impossible, to quantify in terms of dollars.”); Am. Hosp. Supply Corp. v. Hosp. Prods. Ltd., 780 F.2d 589, 611 (7th Cir. 1986) (stating that damages could not adequately compensate the plaintiffs in part because the injury to their reputations and goodwill were “extremely difficult to calculate” (citing Roland Mach. Co. v. Dresser Indus., 749 F.2d 380, 386 (7th Cir. 1984)). That difficulty could render the harm irreparable. See Ross-Simons of Warwick, Inc. v. Baccarat, Inc., 217 F.3d 8, 13–14 (1st Cir. 2000).

The Tenth Circuit also held that, “[e]ven without actual confusion, the likelihood of confusion could contribute to a finding of irreparable injury,” citing Kraft Foods Grp. Brands LLC v. Cracker Barrel Old Country Store, Inc., 735 F.3d 735, 741 (7th Cir. 2013) (stating that a likelihood of confusion was enough when coupled with the risk of “loss of valuable goodwill and control”); Paulsson Geophysical Servs., Inc. v. Sigmar, 529 F.3d 303, 313 (5th Cir. 2008) (stating that a likelihood of confusion was enough when coupled with threats to “potential business” and goodwill).

Although the Tenth Circuit held that the district court did not err in finding irreparable harm for granting a preliminary injunction, the Tenth Circuit did find that the district court “went too far by requiring the Spence Group to remove two sculptures” that included the College's trademark. “One of these sculptures hung on the side of a barn; the other hung above a wooden archway.”

Rather than a mandatory injunction to remove the sculptures, the district court could have instead issued a prohibitory injunction against programming activity by the Spense Group while the sculptures remained visible to customers. Thus, “the district court abused its discretion by ordering removal of the sculptures.”

The attorneys at Thomas P. Howard, LLC are experienced in enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.