USDC C.D. California, January 12, 2010

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  • Court grants plaintiff’s motion for preliminary injunction in copyright and trademark infringement action against publisher of a Twilight fanzine that used plaintiff’s Twilight trademark as well as images from the Twilight films and promotional images that were taken from plaintiff’s publicity website.

Plaintiff Summit Entertainment owns copyrights and trademarks associated with the motion picture Twilight and its sequel New Moon. Defendant Beckett Media published two issues of a Twilight fan magazine. Plaintiff claimed that these fanzines reproduced without authorization numerous images from the films, as well as trademarks and promotional images associated with the films.

More specifically, plaintiff claimed that defendant’s fanzines displayed plaintiff’s stylized trademark without authorization, contained unauthorized reproductions of photographs from the films and plaintiff’s promotional materials (including photographs that are not obtainable from plaintiff’s publicity website and photographs that were altered in violation of the website's terms of use), contained posters that are unauthorized reproductions of plaintiff’s photographs and artwork, and contained unauthorized reproductions of a set of Twilight trading cards published by plaintiff’s licensee.

Plaintiff filed suit for, inter alia, trademark infringement and dilution, copyright infringement, and breach of contract, and filed an application for a temporary restraining order, which the court converted into a motion for a preliminary injunction. In the Ninth Circuit, a plaintiff seeking a preliminary injunction must establish “that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction is in the public interest.” Am. Trucking Ass'ns v. City of Los Angeles, 559 F.3d 1046, 1052 (9th Cir. 2009) (quoting Winter v. Natural Res. Def. Council, Inc., 129 S. Ct. 365, 374, 172 L. Ed. 2d 249 (2008)).

The court held that plaintiff was likely to succeed on the merits of its copyright claim because plaintiff submitted credible evidence that it owns the copyrighted works at issue, that images in defendant’s fanzines are substantially, “even strikingly similar,” in their protected elements to plaintiff’s images, and that defendant had access to the images due to their availability on plaintiff’s website and “by virtue of their pervasiveness resulting from the Twilight movies’ enormous popularity.”

The court rejected defendant’s argument that it obtained the images with plaintiff’s permission from the plaintiff’s publicity website. According to the court, the existence of a license creates an affirmative defense to a claim of copyright infringement, but it is the defendant’s burden to show a likelihood of success on that affirmative defense. “Defendant has not carried that burden here since, most notably, defendant makes no effort to account for its use of allegedly infringing photographs that were not even available on plaintiff’s publicity website. Moreover, a licensee infringes the owner’s copyright if its use exceeds the scope of its license” (internal quotations and citations omitted). The court held that plaintiff presented credible evidence that defendant’s fanzines displayed altered versions of plaintiff’s images and that the publicity website’s terms of use expressly require users to agree that they “will not edit, alter or modify any of the Content without Summit’s prior written approval.” Defendant did not offer any evidence to rebut either point, and the court thus held that plaintiff is likely to overcome defendant’s license defense by establishing that defendant impermissibly copied plaintiff’s images beyond the scope of any license defendant may have had to use those images.

The court also held that plaintiff was likely to succeed on the merits of its trademark infringement claim because it provided credible evidence that it owns a valid, protectable trademark and that defendant displayed a “virtually identical version of this mark” in and on its fanzines.

Turning to irreparable injury, the court held that, in copyright and trademark infringement actions, irreparable injury is presumed upon a showing of likelihood of success on the merits. Moreover, while cessation of unlawful conduct can “moot” a dispute in a manner that renders a preliminary injunction appropriate, such cessation must be irrefutably demonstrated and total. Here, even though defendant indicated it voluntarily recalled both of its fanzines and did not intend to redistribute them or publish any future issues, irreparable injury weighed in favor of plaintiff because, as of the date that defendant’s opposition was filed, copies of the fanzines were still widely available in Los Angeles stores and over the internet.

Regarding the balance of hardships, the court held that plaintiff credibly stated that its copyrights, trademarks and goodwill are at risk of being devalued by defendant’s fanzines, and if an injunction is improperly granted “defendant would not appear to suffer substantial hardship, since the injunction would merely enforce what defendant has already announced its intention to do, namely, cease all offending activity.” Finally, the court agreed with defendant that the scope of the preliminary injunction should be narrowed so that it does not bar any fair use of plaintiff’s copyrighted works and that it should clearly define which of plaintiff’s trademarks are included in the injunction.