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Don't Despair: Even Without a Presumption of Irreparable Harm You Are Still Likely to Win a Preliminary Injunction in Copyright Litigation after Establishing a Likelihood of Infringement

By Andrew Berger

Plaintiffs seeking a preliminary injunction in a copyright infringement case have long benefited from a presumption of irreparable harm that followed a showing of a likelihood of success on the merits. The presumption was a free pass; show success and the court assumed irreparable harm. Irreparable harm is actual and imminent injury that cannot be remedied by monetary damages if a court denies the injunction and waits until the end of trial to resolve the harm.

The Supreme Court in eBay v. Merc-Exchange threw out that presumption in patent cases. The Second Circuit in Salinger v. Colting recently held that eBay also ends that presumption in copyright and trademark cases.

As a result you will need to show irreparable harm to be entitled to a preliminary injunction. But it is unlikely the new standard will make much practical difference in most cases. Salinger was careful "not to say that most copyright plaintiffs who have shown a likelihood of success on the merits would not be irreparable harmed absent preliminary injunctive relief (emphasis added).

Nevertheless, because of Salinger we may all need a quick refresher course in demonstrating irreparable harm. Here are a few suggestions.

Loss of Market Share

You may want to focus first on loss of market share, which has traditionally been viewed as irreparable. That is because, as Salinger noted, citing to an earlier 2d Circuit opinion in Omega Importing v. Petri-Kine "'to prove the loss of sales due to infringement is ... notoriously difficult.'" The viral nature of unauthorized digital distribution on the Internet increases the loss of market share. Each user is capable of making a perfect copy of an infringing file, thereby exponentially multiplying the number of unauthorized copies available for distribution.

Market Confusion

Market confusion caused by illegal copying also produces irreparable harm. The confusion, as Clonus Assocs. v. Dreamworks pointed out, results in damage to the copyright holder in "incalculable and incurable ways." For instance, the defendant's illegal copy may be so poor in quality that prospective purchasers will turn to other competitors rather than buy from either the plaintiff or the defendant. Or that illegal copy may be so good and priced so low that consumers would have no reason to continue to buy the plaintiff's work.

Loss of Monopoly Control

You might also focus on the loss of control over one's copyrights caused by infringement. A copyright is a grant of a limited monopoly which gives the holder the right to control the use of its work. Without a preliminary injunction the copyright holder loses the power to control the exploitation of its property giving the wrongdoer what is in effect a compulsory license to profit from its infringement until the case is over. Courts find that loss of control results in incalculable damage.

Loss of Incentive to Create

Loss of incentive to create may also win you an injunction. As Salinger noted, copyright provides "individuals a financial incentive to contribute to the store of knowledge." Infringement damages the incentive. In Warner Bros. v. RDR Books, J.K. Rowling, the author of the Harry Potter series, convinced the court, based solely on her self-serving testimony, that the continued sale of the defendant's unauthorized companion guide to that series would "destroy" Rowling's incentive to write her own companion guide. That loss of will to create, which may be difficult to rebut on cross-examination, coupled with the loss of sales resulted from the presence of the infringing guide, were enough to establish irreparable harm even in the absence of the presumption.

Continuing Threat of Further Infringement

Finally, if a defendant's past history of infringement is likely to continue absent a preliminary injunction, irreparable harm will also be present. As Powell v. Walt Disney indicates, a repeat infringer's convenient plea that it will infringe no more may not be enough to avoid an injunction.

The More Things Change ...

In sum, has Salinger "changed the contours of copyright litigation" as two noted and respected commentators have stated in an article published in a NY Law Journal article on May 21, 2010. Only slightly. Plaintiffs will have to pay more attention to proof of irreparable harm. But because that harm is usually clear in infringement cases, I suggest that courts will continue with the same frequency to issue preliminary injunctions in most copyright infringement cases.

Andrew Berger is a copyright/trademark lawyer at Tannenbaum Helpern Syracuse & Hirschtritt LLP in New York.

http://www.ipinbrief.com/blog/

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