Aug
10
2011

Perfect 10 v. Google -- Copyright Infringement does not Automatically Result in Injunctive Relief

Perfect 10 is a website which sells subscriptions to view its collection of nude photographs. The photographs are in a password protected area of the Perfect 10 website and are not publicly available.  Certain third party websites copied Perfect 10's photographs and republished them on the internet without permission.  Once the photographs are on the public internet, Google indexes these third party websites and creates a thumbnail image of the photograph which it retains in its index.  Users of Google can then scan these thumbnail images and click through to the third-party websites for a full size photograph.

In 2001 Perfect 10 began notifying Google that its thumbnail images and linking to the full-size images infringed Perfect 10's copyrights.
On November 19, 2004, Perfect 10 filed an action against Google that included copyright infringement claims.  Thereafter Perfect 10 filed a motion for a preliminary injunction to prevent Google, from "copying, reproducing, distributing, publicly displaying, adapting or otherwise infringing, or contributing to the infringement" of Perfect 10's photographs; linking to websites that provide full-size infringing versions of Perfect 10's photographs; and infringing Perfect 10's username/password combinations.

The District Court thereafter issued a preliminary injunction against Google, in part, due to the fact that  the creation of the thumbnail images is copyright infringement.  Google appealed and the Ninth Circuit reversed holding that the the District Court did not properly consider Google fair use defense in making the thumbnail images.  The Ninth Circuit held, "Perfect 10 is unlikely to be able to overcome Google's fair use defense and, accordingly, we vacate the preliminary injunction regarding Google's use of thumbnail images."

Back down at the District Court, Perfect 10's injunction was denied after rehearing based on the Ninth Circuit's ruling.  Perfect 10 then appealed send the case back up to the Ninth Circuit again.

On appeal, Perfect 10 argued that the fact that it had a strong showing that its copyrights had been violated by third parties compelled the court to automatically make a finding of irreparable harm.  In support of this position, Perfect 10 cited a long line of Ninth Circuit cases which stated this legal precedent.

The Ninth Circuit, however, disagreed holding that the prior line of cases were no longer good law in light of the Supreme Court's 2006 decision in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006).  In that case, the Supreme Court found that, "an injunction in a patent infringement case may issue only in accordance with 'traditional equitable principles' and warned against reliance on presumptions or categorical rules."

The Supreme Court then held that the proper test for injunctive relief was the traditional four factor equitable test requiring a party to demonstrate: "(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 be disserved by a permanent injunction."

Although the eBay case involved patents, the Ninth Circuit pointed out that the Supreme Court also discussed the Copyright statute in reaching its ruling,

In reaching this conclusion, the Court relied on and clarified its prior decisions under the Copyright Act.1 It noted that the language of the Copyright Act (like the Patent Act), states that courts “may” grant injunctive relief “on such terms as [they] may deem reasonable to prevent or restrain infringement of a copyright.” Id. at 392 (quoting 17 U.S.C. § 502(a)). Again, this permissive language does not evince a congressional intent to depart from traditional equitable principles.

The Ninth Circuit -- agreeing with a prior ruling on a similar issue by the Second Circuit -- held that,

Following this reasoning, the Second Circuit concluded that eBay abrogated the longstanding presumption “that a plaintiff likely to prevail on the merits of a copyright claim is also likely to suffer irreparable harm if an injunction does not issue,” because this presumption is “inconsistent with the principles of equity set forth in eBay.” Salinger v. Colting, 607 F.3d 68, 75, 79 (2d Cir. 2010).

We agree with the Second Circuit.

Once Perfect 10 lost its presumption that it was automatically entitled to injunctive relief, the Ninth Circuit very quickly disposed of Perfect 10's arguments that without an injunction it would be irreparably harmed.  As for irreparable harm, Perfect 10 argued that Google had destroyed its business model and brought it to the brink of bankruptcy.

The Ninth Circuit, however, did not find Perfect 10's evidence in support of this argument compelling.  The Court noted that, Perfect 10 "failed to submit a statement from even a single former subscriber who ceased paying for Perfect 10’s service because of the content freely available via Google." (Which of course ignores the difficulty of getting a prior user of the Perfect 10 website to admit they were ever a paid subscriber in a sworn declaration...)

While Perfect 10 lost this round (and some prior rounds see Perfect 10 II, 508 F.3d 1146) this case is only at the preliminary injunction stage so expect more rulings from this case down the road.

*Note: the photograph above has no relationship to Perfect 10 or its website.  (Obviously-- she's wearing clothes.)

About the Author:

Leave a comment

You must be logged in to post a comment.