Salinger v. Colting: Not Much of an Impact
The copyright world was abuzz on April 10, 2010 when the Second Circuit vacated a preliminary injunction granted in favor of the J.D. Salinger Literary Trust restraining the an author (and others) from publishing, advertising, or otherwise distributing a book that allegedly infringes Salinger’s copyrights in The Catcher in the Rye. Although hailed by some as a major shift in copyright law, the decision is not likely to have a practical effect on copyright litigation in the Fifth Circuit–or anywhere else, for that matter.
First, some brief background. To prevail on the equitable claim for injunctive relief, a plaintiff must prove that: “(1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.” eBay, Inc. v. MercExchange, LLC, 547 U.S. 388 (2006) (citing Weinberger v. Romero-Barcelo, 456 U.S. 305 (1982)). These principles have been consistently applied by courts in all manner of cases. Well, in most types of cases anyway: the Federal Circuit and Second Circuit developed and applied their own standards in patent and copyright infringement cases, respectively, that gave plaintiffs a free pass on some of the elements.
In eBay, MercExchange filed a patent infringement suit against the online auction site and, after a favorable jury verdict on the question of infringement, MercExchange moved for a permanent injunction against eBay. The district court denied the motion. The Federal Circuit reversed the district court’s denial based on the “general rule that courts will issue permanent injunctions against patent infringement absent exceptional circumstances,” based merely on a finding of infringement. In 2006, the Supreme Court reversed the Federal Circuit’s decision, however, holding that even in patent infringement cases the plaintiff must satisfy all four elements of the test for injunctive relief.
Fast forward to 2009. Author Fredrik Colting wrote a book entitled 60 Years Later: Coming Through the Rye, a book that “tells the story of a 76-year-old Holden Caulfield [the protagonist of The Catcher in the Rye], referred to as Mr. C,’ in a world that includes Mr. C’s 90-year-old author, a ‘fictionalized Salinger.’” The book, originally published in England (outside of the reach of US copyright law), was slated for release in the US in September 2009. Salinger filed suit and asked the district court to enjoin Colting from “manufacturing, publishing, distributing, shipping, advertising, promoting, selling, or otherwise disseminating” the book in the US.
In ruling on Salinger’s motion for preliminary injunction, Judge Deborah Batts of the Southern District of New York found that (i) Salinger owns a valid copyright in The Catcher in the Rye and the Holden Caulfield character, (ii) Colting (and other defendants) infringed Salinger’s copyright in both The Catcher in the Rye and the Holden Caulfield character, (iii) Colting’s fair use defense is likely to fail and, therefore, a preliminary injunction should issue. The district court did not, however, analyze whether Salinger would be irreparably harmed if an injunction did not issue. This omission was–as the Second Circuit said–understandable because the long-standing rule in the Second Circuit was that irreparable harm is presumed in copyright cases upon a finding that the plaintiff is likely to prevail on the merits of the infringement claim.
Colting appealed the grant of the injunction. In Salinger v. Colting, the Second Circuit determined that “although the District Court applied our Circuit’s longstanding standard for preliminary injunctions in copyright cases, our Circuit’s standard [namely, the presumption of irreparable harm] is inconsistent with the ‘test historically employed by courts of equity’ and has, therefore, been abrogated by” the Supreme Court’s eBay decision.
The Salinger case is unlikely to affect copyright litigants in the Fifth Circuit simply because courts in that circuit have always applied the traditional four part test for injunctive relief in copyright infringement cases. See, e.g., Dallas Cowboys Cheerleaders, Inc. v. Scoreboard Posters, Inc., 600 F.2d 1184 (1979). Moreover, as this excellent post by Andrew Berger illustrates, Salinger is unlikely to have a significant practical effect even in the other circuits because irreparable harm may be demonstrated (even where money damages are ascertainable) where the plaintiff can show a loss of market share, loss of monopoly control, the threat of continuing infringement, and the loss of incentive to create.