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Act 51: Taubman Opposes a Stay

As expected, Taubman is opposing my motion for a stay pending my appeal of the injunction.


PARTNERSHIP, a Delaware limited partnership,

v. WEBFEATS, a Texas company, and
HENRY MISHKOFF, an individual,

Case No. 01-72987
Hon. Lawrence P. Zatkoff


On December 7, 2001, this Court granted to Plaintiff ("Taubman") a preliminary injunction, a copy of which is attached hereto as Exhibit A. In the opinion and order, the Court set forth at length the basis for its ruling, and specifically noted that the Court had taken into consideration the briefs of the parties, as well as the amicus curiae brief filed on the First Amendment issues. Defendants subsequently filed an appeal of that order to the Sixth Circuit Court of Appeals, as well as the instant motion for stay of the injunction pending the appeal.

In granting the preliminary injunction, this Court applied the Sixth Circuit's four factor test to determine whether a preliminary injunction should issue: "1) the likelihood of success on the merits; 2) the irreparable harm that could result if the injunction did not issue; 3) the impact on the public interest; and 4) the possibility of harm to others." Forry, Inc. v. Neundorfer, Inc., 837 F.2d 259, 262 (6th Cir. 1988). The Court concluded that the application of this test supported the grant of a preliminary injunction, stressing that there was a high likelihood of confusion, and that the balance of possible harm weighed in favor of granting the injunction.

In response to the instant request of Defendants to stay the preliminary injunction granted, it is respectfully submitted that this request is simply asking the Court to undo that which it has just done in granting the injunction - in other words, to reverse its conclusions on likelihood of success and irreparable harm, and halt the injunction. As such, the motion fails to bring any new issues to the Court's attention. It is essentially a request for reconsideration of the Court's December 7, 2001 order, and should be denied on the grounds that the issues have been decided.

Rule 62(c) of the Federal Rules provides that a stay pending appeal is within the discretion of the District Court, if it deems appropriate. The test for whether a stay should be granted pending appeal, as approved by the Supreme Court, requires the party moving for the stay to establish the following four elements:

  1. it will likely prevail on the merits of the appeal;
  2. it will suffer irreparable injury if the stay is denied;
  3. other interested parties will not suffer substantial harm; and
  4. no harm will be done to the public interest.

Hilton v. Braunskell, 481 U.S. 770, 776 (1987). This Circuit has adopted the standard used in Hilton. See, Americans United for Separation of Church and State v. City of Grand Rapids, 922 F.2d 303, 306 (6th Cir. 1990), rev'd on other grounds, 980 F.2D 1538 (6th Cir. 1992); Congregation Lubavitch v. City of Cincinnati, 923 F.2d 458, 460 (6th Cir. 1991); Michigan Coalition of Radioactive Material Users Inc. v. Grienpentrog, 945 F.2d 150 (6th Cir. 1991), rev'd on other grounds, 954 F.2d 1174 (6th Cir. 1992). The factors set forth under this test closely track those used to determine if a preliminary injunction is merited, which this Court has ruled in the affirmative.

The Grienpentrog case was followed by the Sixth Circuit in denying a request for a stay in Express Mortgage v. Countrywide Home Loans, Inc., Case No. 96-25621; a copy of which is attached hereto as Exhibit B.

An analysis of these factors, all four of which must be satisfied to support a stay, results in the clear conclusion that a stay is not appropriate in this case, and accordingly should be denied.

A. The Appeal is Not Likely to Succeed

The first element of a stay requires the moving party to establish that it is likely to succeed in its appeal. The appeal of the District Court's grant of a preliminary injunction is reviewed under the abuse of discretion standard. Washington v. Reno, 35 F.3d 1093 (6th Cir. 1994), remanded, 1999 Dist. LEXIS 22485 (E.D. Ky. 1999); Boinapally v. University of Tennessee, 2001 U.S. App. LEXIS 26668 (6th Cir. 2001).

As the Sixth Circuit held in Washington, supra,:

    Because a trial court's decision to grant a preliminary injunction is accorded such great deference, we will disturb such a decision only if the district court "relied upon clearly erroneous findings of fact, improperly applied the governing law, or used an erroneous legal standard."

Id. 35 F.3d at 1098 (citing Keweenaw Bay Indian Community v. Michigan, 11 F.3d 1341 (6th Cir. 1993)).

The Defendants have failed to show that this Court has abused its discretion in granting the preliminary injunction protecting Plaintiff's trademark. To the contrary, the record is well supported in fact and law. The Court's conclusion that confusion is highly likely, and that Plaintiff will be harmed by the lack of a preliminary injunction, is substantive support for the injunction, and establishes that there was no abuse of discretion.

With respect to Defendants' argument regarding prior restraint, Plaintiff responds that the injunction does not constitute a prior restraint. Rather, it merely proscribes Defendants' commercial operation of those specifically enumerated websites which incorporate Plaintiffs' trademarks in the domain names. Defendant's speech remains unencumbered elsewhere, and Defendants' continuing to post the information on other internet websites is evidence of this. Given that this element is not satisfied, the stay would not be justified.

B. The Court Has Ruled That Harm Will Be Suffered By Plaintiff, not Defendants, if No Injunction is Issued.

In its order, the Court specifically ruled that Plaintiff will suffer without an injunction. This supports denying the stay. Indeed, given this finding, the grant of a stay would be fundamentally inconsistent. Rodriguez v. DeBuono, 175 F.3d 227 (2d Cir. 1998) (a decision that a stay is warranted is fundamentally inconsistent with the grant of a preliminary injunction.) The Court's finding of harm in its preliminary injunction dictates that the injunction is appropriate, and should not be stayed.

This element, like the above element, has not been satisfied and undermines Defendant's request for a stay. Like the facts and issues before the District Court and the Sixth Circuit in the Countrywide case, the issues in the instant case do not support staying the preliminary injunction pending the appeal.

For all the above reasons, Plaintiff respectfully requests that this Court exercise its discretion to deny the motion to stay the injunction pending appeal.

Respectfully submitted,

Julie A. Greenberg (P-38299)
280 N. Old Woodward Ave., Suite 400
Birmingham, Michigan 48009-5394

Attorneys for Plaintiff

Date: 12-19-01

View the Original Brief (in a separate window)

Next: Preliminary Appeal Paperwork

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