Did eBay Irreparably Injure Trademark Law?

Abstract

The Supreme Court's decision in eBay v. MercExchange, which revolutionized the granting of injunctions in patent cases, has increasingly been applied to trademark cases as well. But courts applying eBay to trademark cases have ignored some fundamental differences between patent and trademark law, including the difficulty of quantifying injury to brand reputation, the rarity of damage awards in trademark cases, and the presence of a third party -- consumers -- with a strong interest in avoiding confusion. Some courts, particularly in the Ninth Circuit, have also turned eBay from a set of guidelines for case-by-case analysis of the equities of an injunction into a hard-and-fast set of requirements for injunctive relief.eBay should apply to trademark cases. But it must be applied with sensitivity to the very different contexts of patent and trademark. Doing so will make it more likely that trademark owners will obtain injunctions in core trademark infringement cases. Nonetheless, courts may still properly use eBay to deny injunctive relief in dilution and association cases where the evidence of harm to the mark owner or consumers is weak or nonexistent.