In two recent cases we see the impact of the Supreme Court’s eBay, Inc. v. MercExchange, LLC decision, 126 S. Ct. 1837, 1839 (2006) in intellectual property cases other than those relating to patents. eBay held that an injunction does not automatically follow a determination of patent infringement. A permanent injunction is only appropriate when four factors are met:
1. irreparable injury;
2. the remedies available at law, such as monetary damages, are inadequate to compensate for that injury;
3. the balance of the hardships between the parties is in favor of a remedy in equity; and
4. the public interest would not be disserved by a permanent injunction.
In Propet USA, Inc. v. Lloyd Shugart, (12/13/07, Western District of Washington), after a jury determination in his favor on claims of copyright infringement, Defendant moved for a permanent injunction and for impoundment and destruction of infringing articles. The Court held that eBay does apply to the treatment of injunctions in copyright cases and that in order to receive a permanent injunction Defendant must meet eBay’s four-factor test. The court held that Defendant met all four factors for an injunction, notably, irreparable harm was demonstrated because there was ongoing infringement in that Plaintiff’s website continued to use Defendant’s images. The court noted that the eBay injunction standard also applied to copyright and trademark cases. Christopher Phelps & Assocs., LLC v. Galloway, 492 F.3d 532, 543 (4th Cir. 2007) (interpreting the Supreme Court’s holding in eBay as “reaffirm[ing] the traditional showing that a plaintiff must make to obtain a permanent injunction in any type of case, including a patent and copyright case”); Reno Air Racing Ass’n v. McCord, 452 F.3d 1126, 1137-38 & n.11 (9th Cir. 2006) (applying the four factor eBay test to a trademark case and noting that the Supreme Court reiterated in eBay that district courts should apply “traditional equitable principles in deciding whether to grant permanent injunctive relief”).
In Photo Resource Hawaii v. American Hawaii Travel, (12/12/07, District of Hawaii), Plaintiff moved for an entry of default judgment on its claims of infringement against Defendant who made unauthorized use of 8 copyrighted photos on its website. The Court granted the default judgment and awarded statutory damages under the Copyright Act and under the DMCA. The notable portion of this decision relates to Plaintiff’s request for a permanent injunction. The Court stated that after eBay, courts have criticized the sometimes automatic practice of granting permanent injunctions after the entry of a default judgment. In light of the recent case law, the Court recommended a denial of the request for a permanent injunction, but granted the request for a temporary injunction. The Court noted that an evidentiary hearing should be held to determine the necessity of a permanent injunction.
What this means for you: In order to receive the grant of a permanent injunction following a judgment in your favor or a default judgment you will need to meet the equitable considerations of the four factor eBay test.