United States District Court, D. South Carolina, Charleston Division
HANGER, INC. and HANGER NATIONAL LABORATORIES, LLC, Plaintiffs,
ORIGINAL BENDING BRACE, LLC and CLARENCE RALPH HOOPER, JR., Defendants.
C. NORTON, UNITED STATES DISTRICT JUDGE
matter is before the court on United States Magistrate Judge
Bristow Marchant's report and recommendation
(“R&R”), ECF No. 29, that the court deny
plaintiffs Hanger, Inc. and Hanger National Laboratories,
LLC's (collectively, “Hanger”) motion for a
preliminary injunction and deny defendants Original Bending
Brace, LLC and Clarence Ralph Hooper, Jr.'s
(collectively, “Hooper”) motion for a preliminary
injunction. For the reasons set forth below, the court adopts
the R&R and denies Hanger's motion for a preliminary
injunction and denies Hooper's motion for a preliminary
injunction. Additionally, the court adopts those portions of
the R&R which are not inconsistent with this Order.
instant cross-motions for preliminary injunction arise out of
a business dispute over the Charleston Bending Brace, an
orthotic device used to treat children with scoliosis.
Pls.' Mot. 1. Hooper and Dr. Frederick Reed
(“Reed”), a physician colleague, invented the
Charleston Bending Brace in 1979. Defs.' Resp. 5. Shortly
thereafter, Hooper and Reed entered into an agreement
(“the Agreement”) with Dobi-Simplex, Inc.
(“Dobi-Simplex”) under which Dobi-Simplex was
given the exclusive license to manufacture, use, and sell the
orthotic device. Id. at 5-7. Hooper founded the
Charleston Bending Brace Research and Education Foundation
(“CRB”) in 1991. Id. at 6. In
conjunction with his work at the foundation, Hooper acquired
the domain rights for www.CBB.org in 1996. Id.
During the course of the business relationship, both parties
used the website to advertise and market the Charleston
Bending Brace. Id.; Pls.' Mot. 9.
a series of corporate acquisitions, Dobi-Simplex became DOBI
Assets Acquisition Corporation in 1992 and changed its name
back to Dobi-Simplex, Inc. (“Dobi 2”). Pls.'
Mot. 2-3. Dobi 2, Hanger's predecessor in interest, filed
an application with the U.S. Patent and Trade Office
(“USPTO”) to register the trademark Charleston
Bending Brace on March 6, 1995. Id. at 8. The USPTO
granted Registration No. 2, 101, 865 for the Charleston
Bending Brace on September 30, 1997. Id., Ex. C. Dobi 2
then merged with Hanger, and Hanger was assigned the
trademark. Id. at 8, Ex. C. Hanger and Hooper
attempted to renegotiate the terms of the Agreement, which
had previously expired, in early 2016 but were unsuccessful.
Defs.' Resp. 8. On April 27, 2016, Hanger was informed
that Hooper had solicited business from one of its referring
physicians and was using a similar designation of the
“Original Bending Brace of Charleston.” Pls.'
filed the instant lawsuit against Hooper on May 10, 2016,
seeking damages and injunctive relief for Hooper's
alleged trademark infringement of the Charleston Bending
Brace mark. Compl. ¶ 1. Hanger then filed a motion for
preliminary injunction on June 10, 2016, to enjoin Hooper
from using the Charleston Bending Brace mark as well as what
it considered to be a “confusingly similar
designation.” ECF No. 8. Hooper filed a response in
opposition on July 8, 2016, and likewise sought to enjoin
Hanger from using the Charleston Bending Brace mark until the
instant litigation is resolved. ECF No. 13.
magistrate judge issued the R&R on August 26, 2016,
recommending the court deny both motions, with Hanger's
motion being denied without prejudice. ECF No. 29. Hooper did
not file any objection to the R&R within the deadline.
Hanger, however, filed timely objections to the R&R on
September 12, 2016 arguing that its motion for preliminary
injunction should be granted. ECF No. 30. Hooper filed a
reply on September 21, 2016. ECF No. 31. The matter is now
ripe for the court's review.
De Novo Review
court is charged with conducting a de novo review of
any portion of the magistrate judge's report to which
specific, written objections are made, and may accept,
reject, or modify, in whole or in part, the recommendations
contained in that report. 28 U.S.C. § 636(b)(1). The
magistrate judge's recommendation does not carry
presumptive weight, and it is the responsibility of this
court to make a final determination. Mathews v.
Weber, 423 U.S. 261, 270-71 (1976). A party's
failure to object may be treated as agreement with the
conclusions of the magistrate judge. See Thomas v.
Arn, 474 U.S. 140, 150 (1985).
purpose of a preliminary injunction is merely to preserve the
relative positions of the parties until a trial on the merits
can be held.” United States v. South Carolina,
840 F.Supp.2d 898, 914 (D.S.C. 2011) (quoting Univ. of
Tex. v. Camenisch, 451 U.S. 390, 395 (1981)). “A
plaintiff seeking a preliminary injunction must establish
that he is likely to succeed on the merits, that he is likely
to suffer irreparable harm in the absence of preliminary
relief, that the balance of the equities tips in his favor,
and that an injunction is in the public interest.”
Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7,
20 (2008). The Supreme Court has noted that a preliminary
injunction is “an extraordinary remedy that may only be
awarded upon a clear showing that the plaintiff is entitled
to such relief.” Id. at 22.
lists two objections to the R&R, arguing that the
magistrate judge improperly: (1) presumes that Hooper's
“bald assertion” that it has ceased the
infringing acts renders the requested preliminary injunction
unnecessary; and (2) fails to consider whether Hooper has met
its heavy burden of showing that there is no reasonable
expectation that any wrong will be repeated, rendering the
requested preliminary injunction unnecessary. ECF No. 30-3.
The court finds that both of these objections center on
mootness concerns and Hanger uses mootness cases in support
of its argument. However, the reasoning in the R&R
denying Hanger a preliminary injunction rested not on
mootness but on the irreparable harm factor of
Winter. As there is no dispute between the parties
as to whether the request for a preliminary injunction is
moot, the court need not address this threshold
justiciability doctrine. The court finds that the
Winter factors, especially that of “likelihood
of success on the merits, ” are not fulfilled such that
a preliminary injunction should issue. Even if irreparable
harm exists, Hanger has not shown that the remaining
Winter factors have been fulfilled, because as
explained below it has not made a clear showing that it is
likely to succeed on the merits.
Likelihood of Succeeding on the Merits
preliminary injunction to issue, Hanger must first make a
clear showing that it is likely to succeed on the merits.
See Winter, 555 U.S. at 20. Hanger argues it is
likely to succeed on the merits in this action because it can
prove each element of its trademark infringement claim.
Pl.'s Mot. 6.
“To establish trademark infringement under the Lanham
Act, a plaintiff must prove: (1) that it owns a valid mark;
(2) that the defendant used the mark ‘in commerce'
and without plaintiff's authorization; (3) that the
defendant used the mark (or an imitation of it) ‘in
connection with the sale, offering for sale, distribution, or
advertising' of goods or services; and (4) that the
defendant's use of the mark is likely to confuse
Rosetta Stone, Ltd. v. Google, Inc., 676 F.3d 144,
152 (4th Cir. 2012); see also 15 U.S.C. §
1114(1)(a). The court addresses each element in turn.