UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
THE TAUBMAN COMPANY LIMITED
PARTNERSHIP, a Delaware limited partnership,
Plaintiff,
v. WEBFEATS, a Texas company, and
HENRY MISHKOFF, an individual,
Defendants.
Case No. 01-72987
Hon. Lawrence P. Zatkoff
PLAINTIFF'S BRIEF IN OPPOSITION TO DEFENDANTS' MOTION FOR STAY PENDING APPEAL
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:
- it will likely prevail on the merits of the appeal;
- it will suffer irreparable injury if the stay is denied;
- other interested parties will not suffer substantial harm; and
- 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)
GIFFORD, KRASS, GROH, SPRINKLE,
ANDERSON & CITKOWSKI, P.C.
280 N. Old Woodward Ave., Suite 400
Birmingham, Michigan 48009-5394
248/647-6000
Attorneys for Plaintiff
Date: 12-19-01
