Conair v. Barbar - Order Denying PI

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA

ORLANDO DIVISION

CONAIR CORPORATION and
BABYLISS FACO SPRL,

Plaintiffs,

v. Case No: 6:14-cv-831-Orl-31TBS

BARBAR, INC. and DOMINIC BARBAR,

Defendants.

ORDER
This matter is before the Court on Plaintiffs Motion for Preliminary Injunction, which was
converted from the Plaintiffs Motion Emergency Temporary Restraining Order (TRO) (Doc. 2)
and supporting memorandum of law, the Defendants Response (Doc. 20), the Plaintiffs Reply in
support of the motion (Doc. 22), and an evidentiary hearing held on the motion on J une 13, 2014.
I. Background
Conair Corporation (Conair) is allegedly the exclusive patent licensee for a hair styling
aid, United States Patent No. 8,607,804, and a hair styling device, United States Patent No.
8,651,118. Babyliss Faco Sprl (Babyliss), a Conair subsidiary, allegedly owns Design Patent
D696,456. These patents are utilized in hair curling devices. Plaintiffs assert that the Defendants
have produced an infringing product. The Complaint also asserts claims for federal trade dress
infringement and common law unfair competition.
II. Standard
To warrant a preliminary injunction the Plaintiff must demonstrate (1) a substantial
likelihood of success on the merits; (2) that irreparable injury will be suffered if the relief is not

granted; (3) that the threatened injury outweighs the harm the relief would inflict on the non-movant;
and (4) that entry of the injunction would serve the public interest. Schiavo v. Schiavo, 403 F.3d
1223, 122526 (11th Cir. 2005) (citing Ingram v. Ault, 50 F.3d 898, 900 (11th Cir. 1995)). See also
Hammock ex rel. Hammock v. Keys et al., 93 F. Supp. 2d 1222, 12261227 (S.D. Ala. 2000). A
preliminary injunction is an extraordinary remedy, and is not warranted unless the Plaintiff has
clearly met the four required elements. C.f., McDonalds Corp. v. Robertson, 147 F.3d 1301, 1306
(11th Cir. 1998); Northeastern Fl. Chapter of the Assn of Gen. Contractors of Am. v. City of
Jacksonville, Fla., 896 F.2d 1283, 1285 (11th Cir.1990).
III. Analysis
During the evidentiary hearing the Court heard testimony from both parties. While the
products appeared similar, there was a striking difference in the volume of sales between the
Plaintiffs product and the Defendants product. Specifically, the Plaintiffs estimated that the sales
of their hair curling product resulted in over a million units sold in 2013 and more than two million
units are projected to be sold in 2014. (Doc. 30 at 27:24-28:16). The Defendants sales, however,
were in the range of approximately 500 units, with a total production of only 2500 units. (See Id. at
106:25-107:6). Currently, the Defendants total sales represent .025% of the Plaintiffs projected
sales this year. Even if the Defendants were to sell their entire inventory of 2500 units, that would
represent only .125% of the Plaintiffs projected sales for 2014.
A preliminary injunction is only warranted where the Plaintiff demonstrates a substantial
threat of irreparable injury. Tough Mudder, LLC v. Mad Cap Events, LLC, 6:12-CV-354-ORL-31,
2012 WL 1946073 at *2 (M.D. Fla. May 30, 2012) (addressing irreparable injury in context of
preliminary injunction). Further, [a]t the preliminary injunction stage, irreparable harm consists of
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harm that could not be sufficiently compensated by money damages or avoided by a later decision
on the merits. Canon, Inc. v. GCC Int'l Ltd., 263 F. Appx 57, 62 (Fed. Cir. 2008).
1

The Plaintiffs theory of irreparable harm is that they will suffer price erosion and that their
reputation and products reputation will be tarnished. (See Doc. 2-1 at 6-7). As to price erosion, a
competitor whose sales would represent less than .2% of the Plaintiffs projected sales for this year
is not a significant threat to the Plaintiffs price point. Moreover, the testimony at the evidentiary
hearing showed that the Defendants two-for-one pricing discount was simply for trade show
marketing purposes and does not represent the regular pricing of the Defendants product. (See Doc.
30 at 32:16-33:7 (describing receipt for two of Defendants products for total cost of $100)). That
limited marketing effort does not represent an intent to presently compete with the Plaintiffs
product at a dramatically lower price.
With respect to the representational injury to the Plaintiffs product, the evidence was mixed
and none of the negative reviews could be clearly traced to any alleged faults with the Defendants
product. (See Docs. 1-1, 1-3 (attachments to Complaint showing positive reviews of Plaintiffs
product); Docs. 21-3. 21-4, 21-5, 21-6 (showing negative reviews of Plaintiffs product). Further,
even assuming that representational harm can be traced to the Defendants product, the volume of
Defendants sales is de minimis. See Am. Beverage Corp. v. Diageo N. Am., Inc., 936 F. Supp. 2d
1
While the typical preliminary injunction analysis requires consideration of the substantial
likelihood of success, that analysis is not always required. The Federal Circuit previously adopted a
procedure whereby a substantial likelihood of success on the merits would result in a presumption
of irreparable harm, but that presumption has been called into question. See eBay Inc. v.
MercExchange, L.L.C., 547 U.S. 388 (2006) (addressing issue in context of permanent injunction,
but with reasoning applicable to preliminary injunction); Adams Arms, Inc. v. Sig Sauer, Inc., 8:10-
CV-146-T-27TGW, 2010 WL 3119777 (M.D. Fla. Aug. 2, 2010) (discussing shifting burden post
eBay); c.f. Reebok Int'l Ltd. v. J. Baker, Inc., 32 F.3d 1552, 1557-58 (Fed. Cir. 1994) (noting that
even if patentee receives benefit of presumption of irreparable harm from patent claim, where harm
would be de minimis, issuance of a preliminary injunction can be precluded).
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555, 615 (W.D. Pa. 2013) (addressing where large sales volume supported lack of irreparable harm
upon showing of fault with allegedly infringing product). Accordingly assertions that the
Defendants product would be tarnished in a non-compensable manner are speculative.
Ultimately, the Courts goal with regard to a preliminary injunction is to preserve the status
quo to ensure that the judicial process is not rendered futile. See Canal Auth. of State of Fla. v.
Callaway, 489 F.2d 567, 573 (5th Cir. 1974) ([T]he most compelling reason in favor of (granting
a preliminary injunction) is the need to prevent the judicial process from being rendered futile by
defendant's action or refusal to act.). In this case, the status quo is not in jeopardy as the matter
currently stands and the lack of a preliminary injunction will not cause irreparable injury to the
Plaintiff.
It is therefore,
ORDERED, that the Motion for Preliminary Injunction (Doc. 2) is DENIED.
DONE and ORDERED in Chambers, Orlando, Florida on J uly 3, 2014.

Copies furnished to:
Counsel of Record
Unrepresented Party
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UNITED STATES DISTRICT COURT

MIDDLE DISTRICT OF FLORIDA

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