You may remember that back in July, Judge Deborah Batts of the Manhattan federal district court issued a preliminary injunction barring U.S. publication of 60 Years Later: Coming Through the Rye, a Swedish author's updated take on J.D. Salinger's Catcher in the Rye - an action filed before the author's death and carried on afterwards by his estate. Among other things, Judge Batts concluded that (notwithstanding some impressive expert affidavits to the contrary), it wasn't likely that the defense would succeed in demonstrating that the reinterpretation was a "fair use" - because it didn't amount to a critique of or commentary on the original. That crabbed reading of the substantive fair use standard (which seemed to overlook a good deal of the recent "transformativeness" jurisprudence) cried out for review - especially in light of the Eleventh Circuit's very different treatment of The Wind Done Gone, Alice Randall's unauthorized Gone with the Wind sequel, in 2001, with its strong emphasis on the copyright/First Amendment connection.. But a funny thing happened on the way to an appeal of the decision on the merits in this newest Salinger-induced copyright controversy. In its first bout with the case, the Second Circuit Court of Appeals focused on what may at first blush appear to be a fine point of procedure, but could ultimately be more significant to the future of copyright - and the fair use doctrine - than any ruling on the rights and wrongs of the infringement claim.
A bit of background may in order. For years, most federal courts in copyright cases have assumed that a plaintiff who demonstrates infringement was presumptively entitled to a permanent injunction barring further circulation of the offending work. The same had long been true in patent litigation as well. And, in a parallel line of decisions, courts in both types of IP cases had held that a plaintiff who demonstrates a statistical "likelihood of success" on the merits (that is a more than 50 percent chance) is entitled to a preliminary injunction in most ordinary circumstances. Then came the unanimous 2006 Supreme Court decision in eBay v. MercExchange, a patent dispute over the eponymous plaintiff's "Buy it Now" feature, which held that "the traditional four-factor test applied by courts of equity when considering whether to award permanent injunctive relief to a prevailing plaintiff applies to disputes arising under the Patent Act. That traditional test requires a plaintiff to demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available at law 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." In other words, there will be cases in which an award of damages - amounting to what might be considered a judicial "compulsory license" - will be enough to make the copyright owner whole while preserving the public interest and it is up to that owner to demonstrate that this isn't one of them!
Ebay left two important questions unresolved - whether the rule applied to preliminary as well as permanent injunctions, and whether it governed in copyright as well as patent cases. In Salinger, the Second Circuit gave its unequivocal answer to both: "We hold today that eBay applies with equal force to (a) preliminary injunctions (b) that are issued for alleged copyright infringement." And with that - and a hint that (after all) the district court's fair use analysis may have been insufficiently generous to the defendant - the Second Circuit sent the case back for a reconsideration of the appropriateness of preliminary injunctive relief according to the eBay standard.
And you may fairly ask, what's so important about that? To appreciate the answer, it helps remember that in recent years most copyright cases that found their way to court never progressed beyond the preliminary injunction stage. As a result, they never produced definitive rulings on the points of law and fact involved - and, especially, on the merit of the defenses interposed (including, but not limited to, fair use). For ordinary (and even some extraordinary) copyright defendant, there's no real percentage in continuing to fight your case when you can't sell your toy or screen you movie or publish your book. Of course, the cases that settle out after an adverse preliminary injunction decision are officially scored as plaintiffs' victories - and publicized as such. And the result has been a sort of intensifier effect, through which even somewhat dubious copyright claims get validated and creative users' arguments are systematically disappeared. Or, to put it another way, it guarantees a permanent dearth of meaningful cases through which the limits of copyright protection can be tested.
It is difficult - to say the least - to imagine that the Supreme Court would see this "extension" of eBay any differently. In 1994, the Court dealt with another seemingly "technical" copyright issue - deciding 9-0 that attorney's fees could be awarded to successful copyright defendants, rather than being reserved for plaintiffs only. The language of Chief Justice Rhenquist's opinion in Forgerty v. Fantasy bears quotation at length here:
[I]n Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975), we discussed the policies underlying the 1909 Copyright Act as follows:
"The limited scope of the copyright holder's statutory monopoly . . . reflects a balance of competing claims upon the public interest: Creative work is to be encouraged and rewarded, but private motivation must ultimately serve the cause of promoting broad public availability of literature, music, and the other arts. The immediate effect of our copyright law is to secure a fair return for an `author's' creative labor. But the ultimate aim is, by this incentive, to stimulate artistic creativity for the general public good." (Footnotes omitted.)
We reiterated this theme in Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 349-350 (1991), where we said:
"The primary objective of copyright is not to reward the labor of authors, but `[t]o promote the Progress of Science and useful Arts.' To this end, copyright assures authors the right to their original expression, but encourages others to build freely upon the ideas and information conveyed by a work." (Citations omitted.)
Because copyright law ultimately serves the purpose of enriching the general public through access to creative works, it is peculiarly important that the boundaries of copyright law be demarcated as clearly as possible. To that end, defendants who seek to advance a variety of meritorious copyright defenses should be encouraged to litigate them to the same extent that plaintiffs are encouraged to litigate meritorious claims of infringement. In the case before us, the successful defense of "The Old Man Down the Road" increased public exposure to a musical work that could, as a result, lead to further creative pieces. Thus a successful defense of a copyright infringement action may further the policies of the Copyright Act every bit as much as a successful prosecution of an infringement claim by the holder of a copyright.
Almost every word of this prescient opinion could apply, with equal force, to the issue in Salinger. Without some meaningful constraint on preliminary injunctions in copyright cases, the "boundaries" of copyright law will never be clearly "demarcated." With such constraint, many things become possible!
