A Copy of Something Huge is Still a Copy Under Copyright Law

The 1976 Copyright Act protects sculptures as copyrightable works.  17 USC §102(a)(5).  The Copyright Act also authorizes the court to order the destruction or other reasonable disposition of all infringing copies. §503(b).  What happens when the copyrighted work is a sculpture and multiple infringing copies have been made?  Can the court order the removal of the infringing copies from their current locations?

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Laches Defense Upheld, But Injunction Imposed After Long Delay by Trademark Owners

Thomas Kenneth Abraham founded Paddle Tramps in 1961.  Paddle Tramps manufactures and sells products displaying the names and symbols of fraternities and sororities and is known for its wooden paddles decorated with the Greek letters associated with fraternities and sororities.  Abraham was first contacted about obtaining a license from the Greek Organizations in 1990.  Abraham received letters from individuals representing the Greek Organizations periodically until 2007, when the Greek Organizations sued him in the Southern District of Florida for patent infringement and unfair competition.  That case was dismissed for improper venue, as Paddle Tramps is located in Lubbock, Texas. 

Abraham then brought a declaratory judgment action against the Greek Organizations in 2008.  A jury found that Abraham established his laches defense and that the Greek Organizations did not establish their unclean hands counter-defense.  The district court ruled that the Greek Organizations were not entitled to damages, due to the laches finding.  The district court judge enjoined Abraham from selling and using in advertising all of the infringing products except one.  Both parties appealed to the Fifth Circuit Court of Appeals.  The Fifth Circuit affirmed the district court’s judgment.

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Multimillion Dollar Trademark Jury Award Upheld by the Ninth Circuit

Skydive Arizona sued defendants collectively doing business as SKYRIDE, alleging trademark claims of false advertising, trademark infringement and cybersquatting.  The district court granted partial summary judgment in Skydive Arizona’s favor on the false advertising claim.  The jury awarded damages to Skydive Arizona:  $1 million for willful false advertising, $2.5 million for willful trademark infringement, $2,500,004 for lost profits and $600,000 statutory damages for six violating domain names.  The district court doubled the false advertising and trademark infringement awards.  SKYRIDE appealed the judgment against it to the Ninth Circuit Court of Appeals.  Skydive Arizona appealed the district court’s grant of an injunction against SKYRIDE limited to Arizona, instead of a nationwide injunction.

Skydive Arizona is one of world’s most well known skydiving centers.  It hosts 145,000 to 160,000 skydives within Arizona each year and provides planes and personnel for skydiving events in 30 other states.  SKYRIDE is a third-party advertising and booking service for skydiving centers, but does not own skydiving facilities.  Customers pay SKYRIDE for a certificate that can be redeemed at drop zones across the country.  SKYRIDE owned and operated a number of website referencing locations in Arizona, such as PhoenixSkydiving and TucsonSkydiving, as well as domain names such as skydivearizona.net.  Both Skydive Arizona and SKYRIDE promote their businesses extensively on the Internet.

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Perfect 10 Denied Preliminary Injunction Against Google, Affirmed by Ninth Circuit

Perfect 10 has a long history of legal action against Google.  The Ninth Circuit does not recount that history in its most recent opinion, but refers the reader to Perfect 10 II, 508 F.3d 1146.

Perfect 10 makes its copyrighted photographic images of nude models available for viewing on a password-protected, paid-subscription website.  These copyrighted images produce essentially all of Perfect 10’s income.   Perfect 10 opposes the display of thumbnail versions of its images by Google’s search engines.  This appeal arises out of Perfect 10’s motion for a preliminary injunction following the Ninth Circuit’s remand in Perfect 10 II.

Perfect 10 argued that it was entitled to an injunction because Google’s web and image search and related caching feature, its Blogger service, and its practice of forwarding Perfect 10’s takedown notices to chillingeffects.org constituted copyright infringement.

(Opinion pdf page 4).

The district court denied Perfect 10’s motion for a preliminary injunction.  The Ninth Circuit first discussed the applicable standard for issuing a preliminary injunction in copyright cases.  It then discussed whether Perfect 10 established that it was likely to suffer from irreparable harm if the injunction did not issue.

Preliminary injunction.

A plaintiff seeking a preliminary injunction must establish (1) that he is likely to succeed on the merits, (2) that he is likely to suffer irreparable harm in the absence of preliminary relief, (3) that the balance of equities tips in his favor, and (4) that an injunction is in the public interest.

(Opinion pdf page 5).

Perfect 10 argued that since it made a strong showing that it was likely to succeed on the merits of its copyright claims, the district court was required to presume that it would suffer irreparable harm and grant the motion for an injunction.  In other words, because Perfect 10 believed that it established it was likely to establish copyright infringement, the district court should automatically issue the injunction.

The Ninth Circuit discussed how even though there is support for Perfect 10’s argument in previous Ninth Circuit decisions, the standard articulated by Perfect 10 is not the law.  In eBay Inc. v. MercExchange, L.L.C., the U.S Supreme Court indicated that the permissive language in the Copyright Act regarding injunctive relief did not demonstrate a congressional intent to depart from traditional equitable principles in granting an injunction in a copyright case and that, therefore, an injunction should not automatically follow a determination of copyright infringement.  Prior to the Supreme Court’s ruling in eBay, federal district courts routinely granted injunctions to prevailing rights holders in both patent and copyright cases.

The Ninth Circuit rejected Perfect 10’s argument for an automatic injunction and ruled that “the propriety of injunctive relief in cases arising under the Copyright Act must be evaluated on a case-by-case basis in accord with traditional equitable principles and without the aid of presumptions” that favor issuing the injunction.  (Opinion pdf page 8).

Although the injunction at issue in eBay was a permanent injunction, not a preliminary injunction such as Perfect 10 requested, the Ninth Circuit determined that the standard is essentially the same.

Irreparable harm

The district court ruled that Perfect 10 failed to establish that it would suffer irreparable harm if the preliminary injunction did not issue.  The Ninth Circuit held that “Perfect 10 has not shown a sufficient causal connection between irreparable harm to Perfect 10’s business and Google’s operation of its search engine.”  (Opinion pdf page 11).  To support its conclusion, the Ninth Circuit pointed to the failure of Perfect 10 to establish that the business was ever financially sound, the free access of Perfect 10 images on other search engines and the failure of Perfect 10 to identify even one former subscriber who stopped paying for the service due to the availability of the images on Google for free.

This opinion is Perfect 10, Inc. v. Google, Inc., No. 10-56316.