Salinger v. Colting, No. 09-2878-cv (2d Cir. April 30, 2010)
The United States Court of Appeals for the Second Circuit vacated and remanded the judgment of the United States District Court for the Southern District of New York, which had granted Salinger’s motion for a preliminary injunction for copyright infringement and unfair competition.
The Second Circuit unanimously held that the Circuit standard for granting preliminary injunctions in copyright cases, applied by the District Court, was inconsistent with the four-factor test “historically employed by courts of equity,” set out in eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388, 390 (2006), which now replaces the original standard. Although eBay was about a permanent injunction for patent infringement, the Second Circuit also held that it “applies with equal force (a) to preliminary injunctions (b) that are issued for alleged copyright infringement.” In so holding, the court explained that eBay strongly suggests that its scope presumptively extends to injunctions in any context. The court also affirmed the district court’s conclusion that Salinger is likely to prevail on the merits due to substantial similarity between the two works and the likely failure of Colting’s fair use defense. Finally, because the Circuit’s original standard for granting preliminary injunctions in copyright cases has been changed to the eBay standard, the court found it unnecessary to reach the constitutional issue of whether the Circuit’s original standard is an unconstitutional prior restraint on speech.
Bloomberg Businessweek provides an overview of the case and features a thorough analysis of the decision. The Am Law Daily and the New York Times summarize some of the legal issues in the decision. Stanford Law School’s Center for Internet and Society submitted an amicus brief arguing that courts should consider more factors before granting injunctions, which can be found here.
Under the old standard, the court “nearly always issued injunctions in copyright cases as a matter of course upon a finding of likelihood of success on the merits,” but under eBay, a plaintiff can only obtain a permanent injunction if he demonstrates:
(1) that he 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, 547 U.S. at 391. In heightening the standard for preliminary injunctions, the Second Circuit relied upon the Supreme Court’s “characterization of injunctive relief as an extraordinary remedy that may only be awarded upon a clear showing that the plaintiff is entitled to such relief”. It also stated that courts should avoid adopting categorical rules for evaluating the irreparable harm factor, which directly overrules its previous presumption of irreparable harm upon a plaintiff’s demonstration of likely success on the merits.
To support its recognition of eBay’s broad scope, the court noted that the Supreme Court applied the four factor test to the patent context after highlighting the similarities between patent infringement and copyright infringement claims and after examining the test’s application in two different cases, one about a permanent injunction for water pollution and the other regarding a preliminary injunction for the violation of a land conservation act.
In finding substantial similarity between Colting’s 60 Years Later: Coming Through the Rye and Salinger’s Catcher in the Rye, the court noted that the former is about a character called Mr. C, a 76-year-old version of Salinger’s Holden Caulfield, and his interaction with his 90-year-old author, described as a “fictionalized Salinger”. Additionally, the court found that the main characters have the same eccentricities, narrate the same way, and experience similar events and adventures, which contributed to its affirmation of the District Court’s finding that Salinger will likely succeed on the merits.
Importantly, this decision represents a change in Second Circuit’s longstanding standard for granting preliminary injunctions in copyright cases to the eBay standard. As a result, it may be more difficult for copyright owners to win preliminary injunctions, which could encourage artists to create works that draw more closely from existing copyrighted works.
Katy Yang is a 1L at Harvard Law School.