In its recent opinion in Perfect 10, Inc. v. Google, Inc., the Ninth Circuit Court of Appeals upheld a district court ruling that a copyright infringement plaintiff’s showing of likely success on the merits is not in itself sufficient to warrant injunctive relief, particularly absent the plaintiff’s separate demonstration that it will suffer irreparable harm.
The case – the latest skirmish in the long-running battle between Perfect 10 and Google – involved Google’s process for complying with Section 512 of the Digital Millennium Copyright Act (“DMCA”). In order to take advantage of the safe harbor protections in Section 512(c) of the DMCA, an online service provider must designate an agent to receive notifications of claimed infringement (so-called “takedown notices”), and make publicly available “substantially . . . the name, address, phone number, and electronic mail address” of such agent. When the online service provider receives an effective takedown notice, the service provider is required to “respond[] expeditiously to remove, or disable access to” the allegedly infringing material.
When Perfect 10 found that Google image searches turned up thumbnail images of Perfect 10’s copyrighted photographs of nude models, Perfect 10 sent various DMCA takedown notices to Google, and – given that Google’s DMCA policies required (as they still do) that all takedown notices include URLs specifically identifying the allegedly infringing material – Perfect 10’s notices included the URLs of the allegedly infringing images that were accessible through Google searches.
Upon receiving the takedown notices, and irrespective of whether Google removed the offending URLs from its search results, Google forwarded the takedown notices to chillingeffects.org, an online educational project run by the Electronic Frontier Foundation and various law schools. This appears to be Google’s current policy as well: “Please note that a copy of each legal notice we receive is sent to a third-party which may publish and annotate it (with your personal information removed). As such, the content submitted in this form will be forwarded to Chilling Effects for publication. You can see an example of such a publication at chillingeffects.org. For products like Google Web Search, a link to your published notice will be displayed in Google’s search results in place of the removed content.” When Perfect 10’s takedown notices appeared on chillingeffects.org, the allegedly infringing URLs were included in those notices and remained accessible to the general public.
In its suit, Perfect 10 moved for preliminary injunctive relief, alleging that, irrespective of Google’s ability to avail itself of the DMCA’s safe harbors, the foregoing practice and other practices constituted continuing infringement by Google of Perfect 10’s copyright in its photographs. But the district court denied Perfect 10’s motion for an injunction, holding that Perfect 10 failed to demonstrate that it was likely to suffer irreparable harm without preliminary injunctive relief being granted – one of the four traditional criteriafor granting preliminary injunctive relief.
On appeal, Perfect 10 cited Apple Computer, Inc. v. Formula International, Inc., which states that “[a] showing of reasonable likelihood of success on the merits in a copyright infringement claim raises a presumption of irreparable harm” that can lead a court to issue a preliminary injunction. The Ninth Circuit, however, affirmed the district court’s ruling, citing both the more recent eBay Inc. v. MercExchange, L.L.C. decision, in which the United States Supreme Court held that language in the Patent Act did not require injunctive relief whenever there was patent infringement, and Salinger v. Colting, a Second Circuit case that extended the eBay decision to copyright cases, doing away with the presumption that “a plaintiff likely to prevail on the merits of a copyright claim is also likely to suffer irreparable harm” without being granted a preliminary injunction.
In agreeing with the Second Circuit, the Ninth Circuit noted that the Copyright Act did not indicate any congressional intent “to authorize a major departure from the traditional four-factor framework that governs the award of injunctive relief[.]” The Ninth Circuit therefore held that Perfect 10’s showing of likely success on the merits was not in itself sufficient to create a presumption of irreparable harm, and Perfect 10’s failure to establish that it had suffered irreparable harm from Google’s actions required a denial of the plaintiff’s motion for a preliminary injunction.
Although it may be too early to predict the ramifications of this latest Perfect 10 ruling, the Ninth Circuit’s reinforcement of the traditional four-factor preliminary injunction test as applied to copyright holders – and its severing of the automatic link between likelihood of success on the merits and irreparable harm – could lead to fewer preliminary injunctions in copyright infringement cases, or perhaps fewer copyright infringement suits being filed in situations where irreparable harm is difficult to demonstrate. Some have opined that it will now become much harder to convince a court of irreparable harm when there is a more tangential infringing use of copyrighted material, for example, “artwork on a wall in the background” of a film. Further, by focusing on the requirements for a preliminary injunction, the Ninth Circuit avoided having to answer one of the more interesting questions, that is, whether posting URLs to allegedly infringing materials on chillingeffects.org (or similar sites) itself constitutes copyright infringement.