Preliminary Injunctions in Copyright Cases: Catching up with The Catcher in the Rye

Prof. Rodney A. Smolla, President, Furman University
October 5, 2010

A question that has long vexed courts and commentators is the extent to which First Amendment principles that heavily disfavor the issuance of prior restraints ought to apply, with either full force or diminished force, when injunctions, including preliminary injunctions, are sought to protect intellectual property interests.  It has been argued that it is unsound First Amendment doctrine to cavalierly treat copyright interests as trumping the powerful First Amendment tradition against prior restraints.¹  It has also been argued that, when a plaintiff seeks a preliminary injunction in a copyright infringement case, the plaintiff should bear the normal burden of demonstrating that irreparable harm will result.²  Even so, courts have often exhibited a blind spot for normal prior restraint and preliminary injunction standards when it comes to enforcement of copyright interests.³

In Salinger v. Colting,⁴ the United States Court of Appeals for the Second Circuit held that the standard governing the issuance of preliminary injunctions established by the Supreme Court of the United States in eBay, Inc. v. MercExchange,⁵ a patent infringement case, applied with equal force to applications for preliminary injunctions in copyright infringement suits.  In eBay a unanimous Supreme Court, in an opinion by Justice Clarence Thomas, held that the traditional equitable factors applied by courts in preliminary injunction cases applied to patent cases.⁶  In the words of the Court:

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 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.⁷

 Salinger v. Colting ⁸was a copyright infringement suit brought originally by author J.D. Salinger, and after his death, by his estate, claiming that the 2009 novel 60 Years Later: Coming Through the Rye, by Fredrik Colting, violated Salinger’s copyright in his famous novel The Catcher in the Rye, published by Salinger in 1951.  Applying the precedent in the Second Circuit prior to the Supreme Court’s eBay decision, that district court had granted a preliminary injunction in favor of Salinger and against Colting.  After finding that the Colting novel did infringe Catcher, and that it was unlikely that Colting would be successful in asserting a fair use defense, the district court granted the injunction, following the Second Circuit’s pre-eBay rule that there is a presumption of irreparable harm flowing from copyright infringement.  The Second Circuit in Salinger v. Colting⁹held that its prior precedent had been abrogated by eBay, which should be understood as applying to copyright cases just as it applies in patent cases.  The Second Circuit articulated the new standard:

[W]e 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.”… 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.”… 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)…. 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.”… 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.  Finally, the court must ensure that the “public interest would not be disserved” by the issuance of a preliminary injunction.¹⁰

In an acknowledgment that First Amendment prior restraint principles appropriately weigh in the balance in applying this test, the Second Circuit described the competing expressive interests of the parties.  The Second Circuit observed that the plaintiff’s interest in copyright infringement cases is principally a property interest in the copyrighted material.¹¹  The Second Circuit also noted, however, that “as the Supreme Court has suggested, a copyright holder might also have a First Amendment interest in not speaking.”¹²  So too, the court observed:

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. ¹³

Yet these interests, the court stressed, “are relevant only to the extent that they are not remediable after a final adjudication.” ¹⁴  There are many reasons why harm might be deemed irreparable, “including that a loss is difficult to replace or difficult to measure, or that it is a loss that one should not be expected to suffer.” ¹⁵  The court observed that in “the context of copyright infringement cases, the harm to the plaintiff’s property interest has often been characterized as irreparable in light of possible market confusion.” ¹⁶

And courts have tended to issue injunctions in this context because “to prove the loss of sales due to infringement is … notoriously difficult.” ¹⁷  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.” ¹⁸

After eBay, the court explained, “courts must not simply presume irreparable harm.” ¹⁹  The court remanded the matter to the district court to apply the newly announced standard in the first instance. ²⁰  The Second Circuit noted, however, that in the interest of judicial economy it would declare its agreement with the district court that Salinger did have a probability of success on the merits, both as to his underlying claim of copyright infringement, and the improbability that a successful fair use defense could be interposed by Colting. ²¹  The remand, therefore, was to be focused principally on the other preliminary injunction factors, particularly the question of whether an actual showing of irreparable harm could be established as required by eBay. ²²

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