The show’s over. The fat lady has sung. Elvis has left the building. The ‘King’ is dead. On August 22, the Ninth Circuit, in Flexible Lifeline Sys., Inc. v. Precision Lift, Inc., No. 10-35987, 2011 WL 3659315 (D. Mont. Aug. 22, 2011), used such popular catchphrases to emphasize that its holding in Elvis Presley Enters., Inc. v. Passport Video, 349 F.3d 622 (9th Circuit 2003), was overruled. The Elvis Presley case had upheld long-standing precedent in the Ninth Circuit: if copyright owners established a likelihood of success on the merits, courts could just presume that, absent injunctive relief, they likely would suffer irreparable harm. Citing the U.S. Supreme Court’s holdings in eBay and Winter, the Ninth Circuit held that this presumption was no longer viable.
Rather, copyright owners in the Ninth Circuit now must establish a likelihood of irreparable harm, regardless of whether the injunctive relief they seek is preliminary or permanent.
The District Court's Decision
Flexible Lifeline Systems, Inc. sued Precision Lift, Inc. for copyright infringement and moved to enjoin it from using its drawings of certain maintenance stands used in connection with aircrafts, which Flexible Lifeline had registered with the U.S. Copyright Office. Having concluded that Flexible Lifeline was likely to succeed on the merits of its claim that Precision Lift had infringed its registered copyrights, the U.S. District Court for the District of Montana concluded that Flexible Lifeline “is presumed to be irreparably harmed,” and granted Flexible Lifeline a preliminary injunction against Precision Life, citing Elvis Presley. Given that the Ninth Circuit had long presumed a copyright owner’s irreparable harm upon a showing of its likelihood of success on the merits, Flexible Lifeline never offered any proof that it likely would suffer irreparable harm, nor did the district court ever conclude whether, absent injunctive relief, Flexible Lifeline likely would suffer irreparable harm.
The Ninth Circuit's Decision
Precision Lift appealed the district court’s preliminary injunction order, arguing that, in copyright infringement cases, a presumption of irreparable harm – as opposed to a finding of irreparable harm –“runs afoul” of the U.S. Supreme Court’s holdings in eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) and Winter v. Natural Res. Defense Council, Inc., 555 U.S. 7 (2008). The Ninth Circuit agreed, vacating the district court’s preliminary injunction order and remanding the case to the district court for it to re-consider whether Flexible Lifeline is entitled to injunctive relief under the traditional four-factor test: (1) likely to succeed on the merits, (2) likely to suffer irreparable harm absent injunctive relief, (3) the balance of equities tips in plaintiff’s favor, and (4) injunctive relief is in the public’s interest.
Central to the Ninth Circuit’s decision were the U.S. Supreme Court’s holdings in eBay and Winter, which required patent owners to establish a likelihood of irreparable harm when seeking preliminary or permanent injunctive relief against infringers, and rejected the presumption of irreparable harm that courts had applied once patent owners had established a likelihood of success on the merits. The Ninth Circuit refused to hold that eBay did not apply to copyright infringement cases, emphasizing that the U.S. Supreme Court “has consistently rejected invitations to replace traditional equitable considerations with a rule that an injunction automatically follows a determination that a copyright has been infringed” and that, in eBay, “made clear that [the] principles [of equity] apply equally to copyright infringement by discussing the Copyright Act and drawing parallels between patent and copyright protection throughout its analysis.”
Indicating that “a standard which presumes irreparable harm without requiring any showing at all is ‘too lenient’,” the Ninth Circuit firmly overruled its long-standing precedent, indicating that “Elvis has left the building.” Notably, a few weeks earlier, a different panel of the Ninth Circuit, which decided Perfect 10, Inc. v. Google, Inc., 10–56316, 2011 WL 3320297 (9th Cir. Aug. 3, 2011), also concluded that “our longstanding rule that a showing of a reasonable likelihood of success on the merits in a copyright infringement claim raises a presumption of irreparable harm … is clearly irreconcilable with the reasoning of … eBay and [is] effectively overruled.”
Trend Among Circuits
The Ninth Circuit’s holding in Flexible Lifeline is consistent with recent rulings from its sister circuits. For example, last year in Salinger v. Colting, 607 F.3d 68 (2d Cir. 2010), the Second Circuit reversed a lower court ruling that relied upon the presumption, holding that, after eBay and Winter, such a presumption was impermissible. Similar rulings have come down in the First Circuit, CoxCom, Inc. v. Chaffee, 536 F.3d 101 (1st Cir. 2008) and the Fourth Circuit, Christopher Phelps & Assocs., LLC, v. Galloway, 492 F.3d 532 (4th Cir. 2007). These rulings suggest that, sooner or later, copyright owners throughout the United States will have to contend with this heightened standard of proof when seeking injunctive relief against infringers.
The Ninth Circuit’s decision is significant because it overruled its long-standing precedent that a copyright owner is entitled to a presumption of irreparable harm upon establishing a likelihood of success on the merits. Now, plaintiffs in the Ninth, Second, Fourth, and First Circuits must make a showing of irreparable harm, which will make it more difficult for them to obtain injunctive relief.
How courts will interpret claims of irreparable harm in copyright infringement cases is unclear. What is clear is that copyright owners must be prepared to explain how they will suffer irreparable injury, absent an injunction, and why money will not remedy that injury. Does the harm have to be permanent? If not, does it have to be of a long duration?
The death of the presumption in patent and copyright cases also begs the question: will the presumption soon be “dead” in trademark cases, too? Only time will tell, but “it ‘aint over til’ the fat lady has sung.”