Considering the impact of the Supreme Court’s 2006 ruling in the patent infringement case eBay Inc. v. MercExchange, L.L.C. on copyright cases, the U.S. Court of Appeals for the Ninth Circuit Court held that irreparable harm may no longer be presumed upon showing a likelihood of success when seeking preliminary or permanent injunctive relief in copyright infringement cases.   Perfect 10 Inc. v. Google Inc., No. 10-56316 (9th Cir., Aug. 3, 2011) (Ikuta, J.)

Plaintiff Perfect 10 creates photographic images of nude models for commercial distribution.   For several years, it featured its photographs in a now-defunct magazine PERFECT 10. More recently, it began offering them for viewing at a paid-subscription website.  The plaintiff earns virtually all of it revenue from monthly subscriptions to view the password-protected photographs at its website.  Defendant internet search engine provider Google uses an automated software program to obtain copies of publically available webpages and images for use in Google’s search index.  Google also offers an internet blog service, Blogger.  Blogger account holders may upload images from the internet onto Google’s server in order to post them on their blogs or may use a hyperlink to images hosted on other servers.  To obtain the “safe harbor” protections of the Digital Millennium Copyright Act, Google employs a copyright infringement notification policy for its search and blog services, including the designation of an agent to receive “takedown” notices from persons alleging copyright infringement.  Google requires takedown notices to include, among other things, the URL for the infringing material.  Google forwards takedown notices to the Chilling Effects website, a nonprofit, educational project run jointly by the Electronic Frontier Foundation and various law schools, which posts such notices on the internet.  Accordingly, even if Google removes allegedly infringing images from its search results, internet users can still find the URL for the allegedly infringing images on the Chilling Effects website.

The plaintiff moved for a preliminary injunction against Google, arguing that Google’s web and image search and related caching feature, its Blogger service and its practice of forwarding the plaintiff’s takedown notices to the Chilling Effects website constituted copyright infringement.  The district court denied the plaintiff’s motion for a preliminary injunction, holding that the plaintiff had not shown that it was likely to suffer irreparable harm in the absence of such relief and that the plaintiff had failed to satisfy any of the other requirements to obtain a preliminary injunction.  The district court also held that Google was entitled to safe harbor protection under the DMCA for its caching feature, its Blogger service and, in part, its web and image search.

On appeal, the 9th Circuit considered whether the district court erred in denying the plaintiff’s motion for preliminary injunction.  To obtain a preliminary injunction, a plaintiff must show that it is likely to succeed on the merits, it is likely to suffer irreparable harm in the absence of a preliminary injunction; the balance of equities tips in its favor and an injunction is in the public interest.  On appeal, the plaintiff argued primarily that because it had shown that it was likely to succeed on its copyright infringement claims, the court must presume irreparable harm.  The 9th Circuit rejected this argument in light of the Supreme Court’s 2006 ruling in eBay Inc. v. MercExchange, L.L.C., a patent case that held that an injunction may issue only in accordance with “traditional equitable principles,” and effectively overruled the Federal Circuit’s practice to issue a permanent injunction nearly automatically once a plaintiff shows infringement and validity.  The 9th Circuit agreed with the U.S. Court of Appeals for the Second Circuit that nothing in the Copyright Act indicates congressional intent to authorize a “major departure” from the traditional four-factor test for injunctive relief to justify a presumption of irreparable harm.  Therefore, the 9th Circuit explained, its “long standing rule” to presume irreparable harm upon a showing of likelihood of success in a copyright infringement case is “effectively overruled,” both for preliminary and permanent injunctions.  After concluding that the plaintiff had not made a sufficient independent showing of irreparable harm, the 9th Circuit affirmed the district court’s denial of the preliminary injunction.

Practice Note:   While the 9th Circuit mentioned one of its post-eBay trademark decisions in a footnote to the Perfect 10 decision, the court did not determine whether the 9th Circuit’s traditional presumption of irreparable harm in trademark cases is abrogated by eBay.  Therefore, whether irreparable harm may still be presumed in trademark infringement cases involving injunctive relief in light of eBay remains undecided in the 9th Circuit.