Copyright Infringement: Ninth Circuit Requires Proof of Irreparable Harm For Preliminary Injunctions

If you thought that the Perfect 10 v. Google case had been resolved long ago, you, like me, would be wrong.  Perfect 10 v. Google, 10-56316 (Ninth Circuit August 3, 2011) is the latest decision by the Ninth Circuit deciding that Perfect 10 should not get an injunction.   In this latest decision again denying Perfect 10 a preliminary injunction, the Ninth Circuit expressly adopted the Supreme Court’s logic in the EBay case which rejected a presumption of irreparable harm in a patent infringement case.  Ebay Inc v. MercExchange, 547 U.S. 388 (2006).

For some time, if a copyright owner showed ownership of a copyrighted work and showed that the defendant had engaged in unauthorized copying, courts presumed that irreparable harm had been shown and shifted the burden of proof to the defendant.   The EBay standard makes getting a preliminary injunction much tougher for copyright owners, reducing the immediate settlement value of many infringement claims.
Perfect 10 is a rather unsympathetic plaintiff, suing Google for its caching of the entire internet and its practice of sending copies of all cease and desist letters to  the Chilling Effects website.  Perfect 10 alleges that because someone could look at a cease and desist letter, then click on the link to view an unauthorized photograph, that it has lost millions of dollars, since consumers won’t pay a subscription for its soft-core pornography when it can be found for free.   At the core of most of Perfect 10’s complaints is that its own subscribers repost images on such services as Blogger.
Since Google is so useful and has adopted what appear to be reasonable anti-infringement policies, it is a sympathetic defendant.  There may be more sympathy for Perfect 10’s position to be found in an amicus brief filed by the Picture Archive Council of America and others, I didn’t dig into this.   An unsympathetic plaintiff who fails to develop a proper record may sometimes shape the law in ways that is undesirable for many others, particularly working photographers needing legitimate protections against republication of original images.  This may well be such a case.   Treating copyrights as fungible goods may not necessarily serve the best interests of society and shifting the cost burden to copyright owners may well be unfair in the case of individual authors who may well be deprived of all bargaining power in cases of legitimate and truly irreparable injury.

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Preliminary Injunction Granted in SDNY - Internet Retransmissions of Television Broadcasts Infringing

Image from http://www.ivi.tv/ viewed 3/13/2010

In WPIX, Inc. v. ivi, Inc. 10 Civ. 715(SDNY Feb 22, 2010), Judge Naomi Reice Buchwald granted a preliminary injunction under the Second Circuit's standard set forth in Salinger v. Colting, 607 F.3d 68 (2d Cir. 2010). I analyzed the Salinger case here.   It's always fun to see whether a preliminary injunction has affected a litigant's operations, but as you can see from the image from http://www.ivi.tv/ above, ivi.tv is still going great guns.

ivi TV is a web-based service that took television broadcasts from around the country and let you watch them on your computer.   Sounds great, but ivi claimed that it was entitled to do so under 17 USC 111 which is a provision giving "cable systems" the right to retransmit broadcasts under compulsory licenses.  Judge Buchwald noted that such a license would cost about $100 per year.

The opinion is long and sets out the history of compulsory licensing of cable retransmissions, if you care for that type of thing.   Noteworthy for plaintiffs is that Judge Buchwald notes at one point that a plaintiff's inability to show irreparable harm is indeed proof of irreparable harm.


It appears obvious to us that defendants have unwittingly demonstrated why the harm they present to plaintiffs is irreparable. There can be no dispute that by taking away viewers from sanctioned entities which compensate or otherwise obtain permission from plaintiffs for the use of their works, defendants are intruding on plaintiffs’ copyrights and taking away business opportunities. This being the case, one might wonder why it is that plaintiffs have not “submitted” specifically identifiable, enumerated, and quantified harms, as defendants seem to believe is necessary. The logical conclusion is that plaintiffs have not made such “submissions” because they cannot specifically demonstrate or quantify the harm that ivi has caused. There is no way to know how many people have used ivi rather than sanctioned methods to watch plaintiffs’ programming, or how many people have used ivi to watch programming that should not have been available in their geographic area. Furthermore, even if we could determine these numbers, we would still not be able to ascertain the precise financial impact on the plaintiffs.


Defendants contend that because plaintiffs cannot specify the harm, it must be speculative. In contrast, we find that it is because the harms are unquantifiable, and [sic] thus irreparable.

For procedure wonks, you will note that the decision involves a first-filed action in Washington State.   The action before Judge Buchwald was a second-filed action in New York.    Judge Buchwald correctly deferred to the first-filed judge to determine whether or not the case was an "improper anticipatory filing" which is not entitled to the traditional first-to-file rule.

I cover the first-filed suit rule (which is not so simple), otherwise known as the prior action pending doctrine in the Copyright Litigation Handbook, Chapter 6:  Cease and Desist Letters and Declaratory Judgment Actions.

Link to Judge Buchwald's decision below.

Wpix v Ivi Tv Inc. Sdny Feb 22 2011


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Copyright, Censorship and the First Amendment Salinger v. Colting (Catcher in the Rye)

Salinger v. Colting, 2010 WL 1729126, 9 (2d Cir. April 30, 2010)

Here is the court's holding (emphasis mine)

Therefore, in light of Winter and eBay, we hold that a district court must undertake the following inquiry in determining whether to grant a plaintiff's motion for a preliminary injunction in a copyright case.

First, as in most other kinds of cases in our Circuit, a court may issue a preliminary injunction in a copyright case only if the plaintiff has demonstrated “either (a) a likelihood of success on the merits or (b) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly in the [plaintiff]'s favor.” NXIVM Corp., 364 F.3d at 476; see also, e.g., Faiveley Transp. Malmo AB v. Wabtec Corp., 559 F.3d 110, 116 (2d Cir.2009).

Second, the court may issue the injunction only if the plaintiff has demonstrated “that he is likely to suffer irreparable injury in the absence of an injunction.” Winter, 129 S.Ct. at 374. The court must not adopt a “categorical” or “general” rule or presume that the plaintiff will suffer irreparable harm (unless such a “departure from the long tradition of equity practice” was intended by Congress). eBay, 547 U.S. at 391, 393-94. Instead, the court must actually consider the injury the plaintiff will suffer if he or she loses on the preliminary injunction but ultimately prevails on the merits, paying particular attention to whether the “remedies available at law, such as monetary damages, are inadequate to compensate for that injury.” eBay, 547 U.S. at 391; see also Winter, 129 S.Ct. at 375 (quoting 11A C. Wright, A. Miller & M. Kane, Federal Practice and Procedure § 2948.1 (2d ed.1995), for the proposition that an applicant for a preliminary injunction “must demonstrate that in the absence of a preliminary injunction, ‘the applicant is likely to suffer irreparable harm before a decision on the merits can be rendered’ ”).

Third, a court must consider the balance of hardships between the plaintiff and defendant and issue the injunction only if the balance of hardships tips in the plaintiff's favor. Winter, 129 S.Ct. at 374; eBay, 547 U.S. at 391. Finally, the court must ensure that the “public interest would not be disserved” by the issuance of a preliminary injunction. eBay, 547 U.S. at 391; accord Winter, 129 S.Ct. at 374.

In analyzing the second prong, the court noted:

The plaintiff's interest is, principally, a property interest in the copyrighted material. See Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 661, 8 L.Ed. 1055 (1834). But as the Supreme Court has suggested, a copyright holder might also have a First Amendment interest in not speaking. See Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 559, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985). The defendant to a copyright suit likewise has a property interest in his or her work to the extent that work does not infringe the plaintiff's copyright. And a defendant also has a core First Amendment interest in the freedom to express him- or herself, so long as that expression does not infringe the plaintiff's copyright.

*  *  *  and


Additionally, “[t]he loss of First Amendment freedoms,” and hence infringement of the right not to speak, “for even minimal periods of time, unquestionably constitutes irreparable injury.” Elrod v. Burns, 427 U.S. 347, 373, 96 S.Ct. 2673, 49 L.Ed.2d 547 (1976).FN10


The interplay of these rights: a First Amendment right to speak, a First Amendment right NOT to speak, and a First Amendment right to portions of the work that do not infringe - will be the fair use battleground of the future.

The problem with this case is that we can't get a copy of the book to see what it actually looks like.   I am skeptical that a book written about a 60-year old man named "Mr. C" could really be so likely to be copyright infringement.  The testimony of the English professors in favor of the defendant and the degree of Holden Caulfield literature out there, Holden's iconic status - and the lack of exploitation appear to be factors weighing in his favor. 

I am not persuaded that Salinger's "right not to speak" is implicated.  Back to the land analogy: if you let your land lie fallow for too long and it becomes overgrown, let someone else till it.  A hot new character in whom a corporate entity is pumping millions should be considered "strong" - like a well-advertised trademark.   But a "Mr. C" who is said to resemble a character not developed for 60 years?  That is a stretch to me.

More troubling to me is that the publicity or book jacket said it was a "sequel".  That is a problem and was probably a stupid mistake that could be remedied without censoring the book.

The case raises First Amendment issues for me unless the book really has major cuts and pastes from "Catcher".   But since I'm banned from reading it, my readers are irreparably harmed by my ignorance, and the poor judges involved are harmed by my skepticism that they are correct.