Los Angeles Copyright SocietyJanuary 2008

Jonathan Zavin, Esq.

Loeb & Loeb LLP

Woods v. Universal City Studios, Inc, 920 F.Supp. 62, 65 (S.D.N.Y. 1996)

Universal argues that the infringement is de minimis because the infringing footage in 12Monkeys amounts to less than five minutes in a movie 130 minutes long. Whether an infringement is de minimis is determined by the amount taken without authorization from the infringed work, and not by the characteristics of the infringing work. As discussed above, 12Monkeys copies substantial portions of Woods’ drawing.

Normally, when a copyright is infringed, irreparable harm is presumed. Fisher-Price, Inc. v. Well-Made Toy Mfg., 25 F.3d 119, 124 (2d Cir. 1994).

Dun v. Lumbermen’s Credit Ass’n, 209 U.S. 20, 23-34 (1908)

But the proportion is so insignificant compared with injury from stopping appellees’ use of their enormous volume of independently acquired information, that an injunction would be unconscionable. In such cases the copyright owner should be remitted to his remedy.

Accepting as true the facts found, we think the discretion of the court was wisely exercised in refusing an injunction and remitting the appellants to a court of law to recover such damage as they might there prove that they had sustained.

Rosemont Enter., Inc. v. Random House. Inc., 366 F.2d 303, 310-311 (2d Cir. 1966)

Lastly, in deciding whether a preliminary injunction should be granted, the possibilities of injury present and potential to the respective parties must be considered and weighed. There is no suggestion that the Look articles are in current publication or ever have been since their single appearance in 1954. There is no claim that any royalties are being received from the Look articles or that any revenue is being derived therefrom. The Look articles and the biography are not in competition with each other. Moreover, one can only speculate at this time as to when, if ever, Rosemont will produce Hughes’ authorized biography. In sum, there was been no showing that the biography has lessened the value of the articles copyrighted by Cowles. See Life Music Inc. v. Wonderland Music Co., 241 F.Supp. 653 (S.D.N.Y. 1965). Compelling reasons for not granting a preliminary injunction in a case such as this have recently been stated by the New York courts. In Pocket Books, Inc., v. Dell Publishing, 49 Misc.2d 252, 256, 267 N.Y.S.2d 26, 273 (1966), involving the title, “The Girl from ‘Peyton Place,’” of a biography of Grace Metalious, the Court said:

‘A preliminary injunction is a drastic remedy, and the Court’s reluctance to so intervene and condemn in this manner and at this stage of the action is heightened by the realization that we are here dealing with a book and not with an ordinary subject of commerce.’

Belushi v. Woodward, 598 F.Supp. 36, 37 (D.C.D.C. 1984)

Since plaintiff currently does not have a book on the market competing with Wired and since legal remedies may adequately address plaintiff’s injury, the potential harm to defendants outweighs the potential harm to plaintiff.

The public interest clearly favors maintaining the integrity of the copyright laws. In this case, however, it appears that legal remedies would vindicate any rights that may have been impinged. Further, there is a competing public interest in this case: the promotion of free expression and robust debate.

Abend v. MCA, Inc, 863 F.2d 1465, 1478 (9th Cir. 1988)

We are mindful that this case presents compelling equitable considerations which should be taken into account by the district court in fashioning an appropriate remedy in the event defendants fail to establish any equitable defenses. Defendants invested substantial money, effort, and talent in creating the “Rear Window” film. Clearly, the tremendous success of that venture initially and upon re-release is attributable in significant measure to, inter alia, the outstanding performances of its stars-Grace Kelly and James Stewart–and the brilliant directing of Alfred Hitchcock. The district court must recognize this contribution in determining Abend’s remedy.

Abend v. MCA, Inc, 863 F.2d 1465, 1479 (9th Cir. 1988)

We believe such special circumstances exist here. The “Rear Window” film resulted from the collaborative efforts of many talented individuals other than Cornell Woolrich, the author of the underlying story. The success of the movie resulted in large part from factors completely unrelated to the underlying story, “It Had To Be Murder.” It would cause a great injustice for the owners of the film if the court enjoined them from further exhibition of the movie. An injunction would also effectively foreclose defendants from enjoying legitimate profits derived from exploitation of the “new matter” comprising the derivative work, which is given express copyright protection by section 7 of the 1909 Act. Since defendants could not possibly separate out the “new matter” from the underlying work, their right to enjoy the renewal copyright in the derivative work would be rendered meaningless by the grant of an injunction. We also note that an injunction could cause public injury by denying the public the opportunity to view a classic film for many years to come.

Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578, n. 10 (1994)

Because the fair use enquiry often requires close questions of judgment as to the extent of permissible borrowing in cases involving parodies (or other critical works), courts may also wish to bear in mind that the goals of the copyright law, “to stimulate the creation and publication of edifying matter,” Leval 1134, are not always best served by automatically granting injunctive relief when parodists are found to have gone beyond the bounds of fair use. See 17 U.S.C. §502(a) (court “may…grant…injunctions on such terms as it may deem reasonable to prevent or restrain infringement”).

Greenberg v. National Geographic Soc’y, 244 F.3d 1267, 1275-1276 (11th Cir. 2001)

Upon remand, the district court should ascertain the amount of damages and attorneys fees that are, if any, due as well as any injunctive relief that may be appropriate. In assessing the appropriateness of any injunctive relief, we urge the court to consider alternatives, such as mandatory license fees, in lieu of foreclosing the public’s computer-aided access to this educational and entertaining work.

New York Times Co. v. Tasini, 533 U.S. 483, 505 (2001)

Notwithstanding the dire predictions from some quarters, see also post, at 2401-2402 (Stevens, J., dissenting), it hardly follows from today’s decision that an injunction against the inclusion of these Articles in the Databases (much less all freelance articles in any databases) must issue. See 17 U.S.C. §502(a) (court “may” enjoin infringement); Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578, n. 10, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994) (goals of copyright law are “not always best served by automatically granting injunctive relief”). The parties (Authors and Publishers) may enter into an agreement allowing continued electronic reproduction of the Authors’ works; they, and if necessary the courts and Congress, may draw on numerous models for distributing copyrighted works and remunerating authors for their distribution.

Silverstein v. Penguin Putnam, Inc., 368 F.3d 77, 84-85 (2d Cir. 2004)

But injunctive relief to enforce a copyright it not compelled. E.g., Dun v. Lumbermen’s Credit Ass’n, 209 U.S. 20, 23-24, 28 S.Ct. 335, 52 L.Ed. 663 (1908) (injunction “unconscionable” where degree of infringement is slight compared to the injury that would result from injunction).

First, an injunction issued to protect any creative spark contributed by Silverstein will impact the value of the copyright in the poems themselves, which subsists in other hands. Second, Complete Poems does not appropriate Silverstein’s arrangement; the only copyright claimed by Silverstein that Penguin arguably infringed is in the selection. As to that, the chief principle of selection is that the poems collected by Silverstein were not collected by Mrs. Parker in her lifetime. The selection was thus made by Mrs. Parker, and it remained for Silverstein only to gather up the poems she selected for exclusion. Third, the gathering itself was work of a kind that copyright does not protect. See Feist,499 U.S. at 347, 111 S.Ct. 1282.

Ebay, Inc. v. MercExchange, L.L.C., 126 S.Ct. 1837,1839 (2006)

According to well-established principles of equity, a plaintiff seeking a permanent injunction must satisfy a four-factor test before a court may grant such a relief. A plaintiff must demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.

Ebay, Inc. v. MercExchange, L.L.C., 126 S.Ct. 1837,1840(2006)

This approach is consistent with our treatment of injunctions under the Copyright Act. Like a patent owner, a copyright holder possesses “the right to exclude others from using his property.” Fox Film Corp. v. Doyal, 286 U.S. 123, 127, 52 S.Ct. 546, 76 L.Ed. 1010 (1932); see also id., at 127-128, 52 S.Ct. 546 (“A copyright, like a patent, is at once the equivalent given by the public for benefits bestowed by the genius and mediations and skill of individuals, and the incentive to further efforts for the same important objects” (internal quotation marks omitted)). Like the Patent Act, the copyright Act provides that courts “may” grant injunctive relief “on such terms as it may deem reasonable to prevent or restrain infringement of a copyright.” 17 U.S.C. §502(a). And as in our decision today, this Court has consistently rejected invitations to replace traditional equitable considerations with a rule that an injunction automatically follows a determination that a copyright has been infringed. See, e.g., New York Times Co. v. Tasini, 533 U.S. 483, 505, 121 S.Ct. 2381, 150 L.Ed.2d 500 (2001) (citing Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578, n. 10, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994)); Dun v. Lumbermen’s Credit Assn., 209 U.S. 20, 23-24, 28 S.Ct. 335, 52 L.Ed. 663 (1908).

Ebay, Inc. v. MercExchange, L.L.C., 126 S.Ct. 1837,1841-1842 (2006)

We hold only that the decision whether to grant or deny injunctive relief rests within the equitable discretion of the district courts, and that such discretion must be exercised consistent with traditional principles of equity, in patent disputes no less than in other cases governed by such standards.

When the patented invention is but a small component of the product the companies seek to produce and the threat of an injunction is employed simply for undue leverage in negotiations, legal damages may well be sufficient to compensate for the infringement and an injunction may not serve the public interest.

Lava Records LLC v. Ates, 2006 WL 1914166 *3 (W.D.La. 2006)

The Court has considered the four-factor test approved by the Supreme Court for determining injunctive relief: (1) whether Plaintiffs would face irreparable injury if the injunction did not issue, (2) whether Plaintiffs have an adequate remedy at law, (3) whether granting the injunction is in the public interest, and (4) whether the balance of the hardships tips in Plaintiffs’ favor. After consideration, the Court finds that a permanent injunction is appropriate because of the strong public interest in copyright protection; the need to prevent irreparable harm to Plaintiffs, which will not be remedied by a damage award that may or may not be collectible; and the need to deter future infringement by Defendant and others. See BMG Music, 430 F.3d 888 at 893 (“An injunction remains appropriate to ensure that the misconduct does not recur as soon as the case ends.). The Court further notes that the balance weighs strongly in favor of Plaintiffs where all that is requested is that Defendant comply with the Copyright Act.

Disney Enter., Inc. v. Delane, 446 F.Supp. 2d 402, 408 (D.Md. 2006)

Plaintiffs allege, and the record supports, that they have suffered irreparable injury. Delane has made Plaintiffs’ copyrighted programs available through his Web site and trackers, and there is no way to know how many times this content has been accessed and downloaded, or if he is continuing this infringing behavior. Also, Delane has not appeared or participated in this litigation, and because of the nature of his Web site and trackers, further infringements are a continuing threat, making remedies at law insufficient to compensate for Plaintiffs’ injuries. Additionally, the screenshots of Delane’s Web site show more than one hundred copyrighted programs available for download. Thus, Delane potentially has facilitated the download of far more than just the eleven programs listed in Plaintiffs’ Exhibit A, and may continue to do so, particularly in light of his absence from these proceedings, placing the resulting hardships squarely on the Plaintiffs. Finally, the public interest would not be disserved by a permanent injunction, as there is greater public benefit in securing the integrity of Plaintiffs’ copyrights than in allowing Delane to make Plaintiffs’ copyrighted material available to the public. The court therefore will grant the permanent injunction.

Christopher Phelps & Assocs., LLC v. Galloway, 477 F.3d 128, 139 (4th Cir. 2007)

Insofar as Phelps & Associates suggests that it is entitled to injunctive relief, we reject the argument. See eBay Inc. v. MercExchange, L.L.C., ---- U.S. ----, ----, 126 S.Ct. 1837, 1839, 164 L.Ed.2d 641 (2006). In eBay, the Supreme Court rejected any notion that “an injunction automatically follows a determination that a copyright has been infringed.” 126 S.Ct. at 1840 (reversing the Federal Circuit, which had articulated “a ‘general rule,’ unique to patent disputes, ‘that a permanent injunction will issue once infringement and validity have been adjudged’”). The Supreme Court reaffirmed the traditional showing that a plaintiff must make to obtain a permanent injunction in any type of case, including a patent or copyright case.

Allora, LLC v. Brownstone, Inc., 2007 WL 1246448 *5 (W.D.N.C. 2007)

Although Plaintiff stated during oral argument that the decision to presume irreparable harm and likelihood of success following a prima facie case of copyright infringement remains within the Court’s discretion, Plaintiff argues Fourth Circuit precedent encourages – and virtually requires – this Court to exercise its discretion and presume these two factors in granting a preliminary injunction for Plaintiff. In 2006 the United States Supreme Court clarified the confusion over the burden associated with preliminary injunctions in copyright actions by stating, the Copyright Act provides that courts “may” grant injunctive relief “on such terms as it may deem reasonable to prevent or restrain infringement of a copyright.” 17 U.S.C. & 502(a). And as in our decision today, this Court has consistently rejected invitations to replace traditional equitable considerations with a rule that an injunction automatically follows a determination that a copyright has been infringed.

Allora, LLC v. Brownstone, Inc., 2007 WL 1246448 *5 (W.D.N.C. 2007)

However, while it is clear that a plaintiffs showing of a prima facie case of copyright infringement will not automatically entitle a plaintiff to a preliminary injunction, what remains a question in the wake of eBay is whether, as Plaintiff suggests, this Court should presume irreparable harm and likelihood of success on the merits upon a showing of a prima facie case of copyright infringement by a plaintiff. Until this issue is clarified by the Fourth Circuit or the Supreme Court, this Court will not presume irreparable harm and likelihood of success on the merits following a prima facie showing of copyright infringement, but will instead treat copyright cases in the same manner as any other civil action requesting a preliminary injunction. That is, Plaintiff must satisfy the traditional test set forth in Blackwelder and its progeny to succeed on a motion for preliminary injunction.

UMG Recordings, Inc. v. Blake, 2007 WL 1853956 *3 (E.D.N.C. 2007)

Irreparable injury is presumed when a plaintiff succeeds on the merits. Sony Music Entm’t, Inc. v. Global Arts Prods., 45 F.Supp.2d 1345, 1346 (S.D. Fla. 1999). Consequently, Plaintiffs need not show irreparable harm, as the entry of default provides them with success on the merits and a presumed injury. See id. The remedy available at law for this injury, monetary damages, will only compensate for Defendant’s one-time infringement of each recording, and not for inevitable future transfers.

Nat’l League of Junior Cotillions, Inc. v. Porter, 2007 WL 2316823 *5-6 (W.D.N.C. 2007)

Some have suggested that eBay (and Phillips by extension) forecloses the use of a presumption of irreparable harm on applications for preliminary injunctions in IP cases. Both decisions, however, came after a full trial and on an application for a permanent injunction, and by their terms, both apply only to permanent injunctions. Moreover, the only Court of Appeals opinion to explicitly address the decision suggests that, at the preliminary injunction stage, the presumption based on likelihood of success survives eBay. See Abott Laboratories v. Andrx Pharmaceuticals, Inc., 452 F.3d 1331, 1347 (Fed.Cir. 2006) (“Abbott has not established a likelihood of success. As a result, Abbott is no longer entitled to a presumption of irreparable harm.”).

Because neither the Supreme Court nor the Fourth Circuit has explicitly extended eBay’s reasoning to preliminary injunctions, and given the slight record in this case, the Court will not attempt to resolve eBay’s impact at the preliminary injunction stage, and will proceed with the analysis detailed in Microsoft and elsewhere.

Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, 2007 WL 3227684 *11 (C.D. Cal. 2007)

Third, the longstanding rule that irreparable harm can be presumed after a showing of likelihood of success for purposes of copyright preliminary injunction motion may itself have to be reevaluated in light of eBay. It is true that post eBay, the Federal Circuit assumed the continued existence of a presumption of irreparable harm for preliminary injunctions. See Abbott Labs. V. Andrx Pharms., Inc., 452 F.3d 1331, 1347 (Fed.Cir. 2006) (“First, as noted above, we conclude that Abbott has not established a likelihood of success on the merits. As a result, Abbott is no longer entitled to a presumption of irreparable harm.”)

When Infringement Is Found, Under What Circumstances May An Injunction Not Issue

1. Against the Public Interest Stewart v. Abend Greenberg v. National Geographic Society New York Times v. Tasini

2. Large Contribution By Infringer, and Amount Taken Relatively Small Dun v. Lumbermen’s Credit Association Belushi v. Woodward Silverstein v. Penguin Putnam Stewart v. Abend

3. Close Fair Use QuestionCampbell v. Acuff-Rose Music

4. Disproportionate Harm to InfringerChristopher Phelps Associates v. Galloway

5. Unclean Hands of PlaintiffRosemont Enterprises v. Random House