concluding that the Ninth Circuit’s longstanding rule that a showing of a reasonable likelihood of success on the merits in a copyright infringement claim raises a presumption of irreparable harm, “is clearly irreconcilable with the reasoning of the Court’s decision in eBay and has therefore been “effectively overruled.”
How later courts described this case
- concluding that the Ninth Circuit’s longstanding rule that a showing of a reasonable likelihood of success on the merits in a copyright infringement claim raises a presumption of irreparable harm, “is clearly irreconcilable with the reasoning of the Court’s decision in eBay and has therefore been “effectively overruled.”
- holding that our “longstanding rule that ‘[a] showing of a reasonable likelihood of success on the merits in a copyright infringement claim raises a presumption of irreparable harm” was effectively overruled because it was “clearly irreconcilable with the reasoning’ of the Court’s decision in eBay”
- finding that plaintiff was unlikely to 3 succeed on the merits of their § 3344 claims where Google hosted, but did not publish, webpages 4 containing individuals’ likenesses, since “‘[c]ontributing’ to someone's violation of something is 5 not the same as actually ‘violating’ it”
- finding that the district court did not abuse its discretion for denying preliminary 17 || injunctive relief because the plaintiff failed to show irreparable harm
Written by the judges who cited it.
The opinion
FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
PERFECT 10, INC.,
Plaintiff-counter-defendant- No. 10-56316
Appellant, D.C. No.
v. 2:04-cv-09484-
GOOGLE, INC., a corporation, AHM-SH
Defendant-counter-claimant- OPINION
Appellee.
Appeal from the United States District Court
for the Central District of California
A. Howard Matz, District Judge, Presiding
Argued and Submitted
April 11, 2011—San Francisco, California
Filed August 3, 2011
Before: Alex Kozinski, Chief Judge, Michael Daly Hawkins
and Sandra S. Ikuta, Circuit Judges.
Opinion by Judge Ikuta
10119
PERFECT 10 v. GOOGLE 10121
COUNSEL
David Schultz (argued) and Jeffrey Neil Mausner, Law
Offices of Jeffrey N. Mausner, Woodland Hills, California,
for appellant Perfect 10, Inc.
Andrew H. Schapiro (argued), Mayer Brown, LLP, New
York, New York; Michael T. Zeller, Quinn Emanuel Urquhart
& Sullivan, LLP, Los Angeles, California; Bradley R. Love,
Quinn Emanuel Urquhart & Sullivan, LLP, San Francisco,
California; and Rachel Herrick Kassabian, Margret M.
Caruso, and Andrea Pallios Roberts, Quinn Emanuel Urquhart
& Sullivan, LLP, New York, New York, for appellee Google,
Inc.
10122 PERFECT 10 v. GOOGLE
Nancy E. Wolff, Cowan, DeBaets, Abrahams & Sheppard,
New York, New York, for amici curiae Picture Archive
Council of America, Inc., et al.
Joseph C. Gratz, Durie Tangri LLP, San Francisco, Califor-
nia, for amici curiae Chilling Effects Clearinghouse Leaders.
OPINION
IKUTA, Circuit Judge:
In this appeal, we once again consider a request by Perfect
10, Inc. for a preliminary injunction against Google, Inc. See
Perfect 10, Inc. v. Amazon.com, Inc. (Perfect 10 II), 508 F.3d
1146 (9th Cir. 2007). Because Perfect 10 has not demon-
strated that it would likely suffer irreparable harm in the
absence of a preliminary injunction, we affirm the district
court’s denial of that relief.
I
This appeal is the latest installment in a legal saga of sev-
eral years’ duration. That history is recounted elsewhere, see
Perfect 10 II, 508 F.3d 1146, so we focus here on only those
facts material to the questions before us now. Perfect 10
creates (and copyrights) photographic images of nude models
for commercial distribution. For several years, it featured
them in a now-defunct magazine, “PERFECT 10”; more
recently, it began offering them for viewing on a password-
protected, paid-subscription website, “perfect10.com.” Perfect
10’s subscription website generates revenue from subscribers
who pay a monthly fee to view the copyrighted images in a
“members’ area,” which members access through a unique
username/password combination. Perfect 10 v. Google, Inc.
(Perfect 10 I), 416 F. Supp. 2d 828, 832 & n.3 (C.D. Cal.
2006). Perfect 10 has generated virtually all of its revenue
from these copyrighted images. Id. at 832.
PERFECT 10 v. GOOGLE 10123
Google operates numerous web-based services. Chief
among them is its search engine, which uses an automated
software program, known as a web crawler, to obtain copies
of publicly available webpages and images for use in its
search index. Google’s servers store the text of a web page in
its cache, Perfect 10 II, 508 F.3d at 1156 & n.3. In addition
to its search engine, Google offers a service called Blogger,
which hosts blogs created by users on Google’s server. Blog-
ger account holders may upload images from the web onto
Google’s server in order to post them on their blogs, or may
use a hyperlink to images hosted on other servers.
In order to obtain the protections of the Digital Millennium
Copyright Act (DMCA), Google has developed a copyright-
infringement notification policy for each of these Internet ser-
vices. Under the DMCA, a provider of online services (such
as Google) must, among other things, designate an agent to
receive a notification of claimed infringement (often referred
to as a “takedown notice”) in order to get certain safe harbor
protections. Under Google’s notification policies, the take-
down notice must include, among other things, the URL for
the infringing material. Google forwards the takedown notices
it receives to the website “chillingeffects.org,” a nonprofit,
educational project run jointly by the Electronic Frontier
Foundation and various law schools, which posts such notices
on the Internet. As a result, even if Google removes Perfect
10’s images from its search results, a person can still find the
URL for the allegedly infringing images on chilling-
effects.org.
Following our remand in Perfect 10 II, Perfect 10 once
again moved for a preliminary injunction against Google. Per-
fect 10 argued that it was entitled to an injunction because
Google’s web and image search and related caching feature,
its Blogger service, and its practice of forwarding Perfect 10’s
takedown notices to chillingeffects.org constituted copyright
infringement. Additionally, Perfect 10 argued that it was enti-
tled to an injunction based upon Google’s alleged violation of
10124 PERFECT 10 v. GOOGLE
the rights of publicity assigned to Perfect 10 by some of its
models.
The district court rejected each of these arguments and
denied Perfect 10’s motion for preliminary injunctive relief.
In doing so, the court held that Perfect 10 had not shown that
it was likely to suffer irreparable harm in the absence of such
relief, and that it had failed to satisfy any of the other require-
ments for a preliminary injunction. The district court also
resolved motions by Google for partial summary judgment,
and 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, Perfect 10
claims that the district court erred in denying its motion for
a preliminary injunction and also seeks review of the district
court’s summary judgment order on the DMCA issues, argu-
ing that the latter order is inextricably intertwined with the
company’s request for injunctive relief.
II
We begin by considering whether the district court erred in
denying Perfect 10’s request for preliminary injunctive relief.
“A plaintiff seeking a preliminary injunction must establish
[(1)] that he is likely to succeed on the merits, [(2)] that he is
likely to suffer irreparable harm in the absence of preliminary
relief, [(3)] that the balance of equities tips in his favor, and
[(4)] that an injunction is in the public interest.” Winter v.
Natural Res. Def. Council, Inc., 129 S. Ct. 365, 374 (2008).
We review the district court’s determination that the plaintiff
satisfied each of these four factors for abuse of discretion.
Park Vill. Apartment Tenants Ass’n v. Mortimer Howard
Trust, 636 F.3d 1150, 1158-59 (9th Cir. 2011). In doing so,
our review is “limited and deferential.” Am. Trucking Ass’n v.
City of Los Angeles, 559 F.3d 1046, 1052 (9th Cir. 2009)
(quoting Lands Council v. Martin, 479 F.3d 636, 639 (9th Cir.
2007)) (internal quotation marks omitted).
PERFECT 10 v. GOOGLE 10125
In explaining how it meets the four-factor test for prelimi-
nary injunctive relief, Perfect 10 argues primarily that because
it has made a strong showing of likely success on the merits
of its copyright claims, a court must presume it will suffer
irreparable harm. In making this argument, Perfect 10 relies
on a long line of cases, beginning with Apple Computer, Inc.
v. Formula International, Inc., 725 F.2d 521 (9th Cir. 1984),
where we held that “[a] showing of a reasonable likelihood of
success on the merits in a copyright infringement claim raises
a presumption of irreparable harm” for purposes of a prelimi-
nary injunction. Id. at 525. We have repeated and relied on
this rule numerous times in the nearly three decades since
Apple Computer. See, e.g., LGS Architects, Inc. v. Concordia
Homes of Nev., 434 F.3d 1150, 1155-56 (9th Cir. 2006); Sun
Microsystems, Inc. v. Microsoft Corp., 188 F.3d 1115, 1119
(9th Cir. 1999); Johnson Controls, Inc. v. Phoenix Control
Sys., Inc., 886 F.2d 1173, 1174 (9th Cir. 1989); Rodeo Collec-
tion, Ltd. v. W. Seventh, 812 F.2d 1215, 1220 (9th Cir. 1987).
[1] These cases, however, all predate eBay Inc. v. MercEx-
change, L.L.C., 547 U.S. 388 (2006), which indicated 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. Id. at
393. In eBay, the Supreme Court considered a decision by the
Federal Circuit holding that MercExchange was entitled to a
permanent injunction against eBay. Id. at 391. MercExchange
had prevailed at trial in its patent infringement action against
eBay, but the district court concluded that the company’s will-
ingness to license its patents made it categorically unable to
show irreparable harm from copyright infringement. Id. at
390, 393. The Federal Circuit reversed, applying its rule “that
a permanent injunction will issue once infringement and
validity have been adjudged.” Id. at 393-94 (quoting MercEx-
change, LLC v. eBay, Inc., 401 F.3d 1323, 1338 (Fed. Cir.
2005)) (internal quotation marks omitted).
[2] The Supreme Court reversed, holding that “the tradi-
tional four-factor framework that governs the award of injunc-
10126 PERFECT 10 v. GOOGLE
tive relief” applies to “disputes arising under the Patent Act.”
Id. at 394. The use of presumptions or categorical rules in
issuing injunctive relief would constitute “a major departure
from the long tradition of equity practice,” and “should not be
lightly implied.” Id. at 391 (quoting Weinberger v. Romero-
Barcelo, 456 U.S. 305, 320 (1982)). The Court detected no
evidence in the language of the Patent Act that Congress “in-
tended such a departure” from traditional equity practice, id.
at 391-92, rejecting the argument that courts could find con-
gressional intent to depart from the four-factor framework in
statutory language giving patent holders a “right to exclude
others from making, using, offering for sale, or selling the
invention,” id. at 392 (quoting 35 U.S.C. § 154(a)(1)).
According to the Court, this language did not require the issu-
ance of injunctive relief whenever there was patent infringe-
ment, because “the creation of a right is distinct from the
provision of remedies for violations of that right,” id., and the
relevant remedial provision stated only that injunctive relief
“may” issue “in accordance with the principles of equity,” id.
(quoting 35 U.S.C. § 283). Therefore, both the district and
appellate courts had erred in adopting a categorical rule
instead of making a fact-specific application of the traditional
four-factor test for injunctive relief. Id. at 393.
[3] 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 infringe-
ment of a copyright.” Id. at 392 (quoting 17 U.S.C. § 502(a)).
Again, this permissive language does not evince a congressio-
nal intent to depart from traditional equitable principles, and
1
The Court has since extended the logic of eBay to the NEPA context.
See Monsanto Co. v. Geertson Seed Farms, 130 S. Ct. 2743, 2756-57
(2010) (invalidating our presumption that a court may withhold injunctive
relief for a NEPA violation only in “unusual circumstances” and stating
that “[n]o such thumb on the scales is warranted”).
PERFECT 10 v. GOOGLE 10127
the statutory language giving a copyright holder (like a patent
holder) “the right to exclude others from using his property”
does not suggest otherwise. Accordingly, the Court “has con-
sistently rejected invitations to replace traditional equitable
considerations with a rule that an injunction automatically fol-
lows a determination that a copyright has been infringed.” Id.
at 392-93 (citing N.Y. Times Co. v. Tasini, 533 U.S. 483, 505
(2001)). Following this reasoning, the Second Circuit con-
cluded that eBay abrogated its 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).
[4] We agree with the Second Circuit. As explained in
eBay, the language of § 502(a) is permissive and evokes tradi-
tional equitable principles: “[T]he Copyright Act provides
that courts ‘may’ grant injunctive relief ‘on such terms as
[they] may deem reasonable to prevent or restrain infringe-
ment of a copyright.’ ” 547 U.S. at 392 (quoting 17 U.S.C.
§ 502(a)). Nothing in the statute indicates congressional intent
to authorize a “major departure” from “the traditional four-
factor framework that governs the award of injunctive relief,”
id. at 391, 394, or to undermine the equitable principle that
such relief is an “extraordinary and drastic remedy” that “is
never awarded as of right,” Munaf v. Green, 553 U.S. 674,
689-90 (2008) (internal quotation marks omitted). We there-
fore conclude that the propriety of injunctive relief in cases
arising under the Copyright Act must be evaluated on a case-
by-case basis in accord with traditional equitable principles
and without the aid of presumptions or a “thumb on the scale”
in favor of issuing such relief. Monsanto, 130 S. Ct. at 2757.
[5] Although eBay dealt with a permanent injunction, the
rule enunciated in that case is equally applicable to prelimi-
nary injunctive relief. This conclusion is compelled by
Supreme Court precedent, cited in eBay, holding that “[t]he
10128 PERFECT 10 v. GOOGLE
standard for a preliminary injunction is essentially the same
as for a permanent injunction with the exception that the
plaintiff must show a likelihood of success on the merits
rather than actual success.” Amoco Prod. Co. v. Vill. of Gam-
bell, 480 U.S. 531, 546 n.12 (1987); accord Voice of the Arab
World, Inc. v. MDTV Med. News Now, Inc., No. 10-1396,
2011 WL 2090132, at *5-7 (1st Cir. 2011); Salinger, 607 F.3d
at 79-80.
In sum, we conclude that our longstanding rule that “[a]
showing of a reasonable likelihood of success on the merits
in a copyright infringement claim raises a presumption of
irreparable harm,” Apple Computer, Inc., 725 F.2d at 525, “is
clearly irreconcilable with the reasoning” of the Court’s deci-
sion in eBay and has therefore been “effectively overruled.”
Miller v. Gammie, 335 F.3d 889, 893 (9th Cir. 2003) (en banc).2
III
Having disposed of Perfect 10’s argument that the district
court should have presumed that it would suffer irreparable
harm, we now turn to whether the district court abused its dis-
cretion in holding that Perfect 10 had not established this fac-
tor. Perfect 10’s theory of irreparable harm is that Google’s
various services provide free access to Perfect 10’s propri-
etary images, and this access has both destroyed its business
2
In Marlyn Nutraceuticals, Inc. v. Mucos Pharma GmbH & Co., 571
F.3d 873 (9th Cir. 2009), a trademark case decided after eBay (but which
did not reference that opinion), we continued to rely on the pre-eBay rule
that a trademark holder is entitled to a presumption of irreparable harm if
there is a likelihood of success on the merits. Id. at 877. Under eBay, how-
ever, courts must analyze each statute separately to determine whether
Congress intended to make “a major departure from the long tradition of
equity practice” and create a statutory presumption or categorical rule for
the issuance of injunctive relief. 547 U.S. at 391 (quoting Weinberger, 456
U.S. at 320). Because this case does not require us to consider Congress’s
intent in enacting the Lanham Act, Marlyn Neutraceutical’s adherence to
a presumption of irreparable harm in a trademark case is irrelevant to our
current inquiry.
PERFECT 10 v. GOOGLE 10129
model and threatened it with financial ruin, since no one
would be willing to pay a subscription fee for material that is
available without charge. To support this theory, Perfect 10
relies on several declarations by Dr. Norman Zada, Perfect
10’s founder, president, and major financial backer. In these
declarations, Dr. Zada stated that the number of thumbnail
versions of Perfect 10 images available via Google’s Image
Search had increased significantly between 2005 and 2010.
Further, Dr. Zada stated that the company’s “revenues have
declined from close to $2,000,000 a year to less than
$150,000 a year,” resulting in over $50 million in losses from
1996 to 2007, and an annual loss of at least $3 million since
then, pushing the company “very close to bankruptcy.”
[6] Given the limited nature of this evidence, the district
court did not abuse its discretion in concluding that Perfect 10
failed to establish that Google’s operations would cause it
irreparable harm. While being forced into bankruptcy quali-
fies as a form of irreparable harm, Doran v. Salem Inn, Inc.,
422 U.S. 922, 932 (1975), Perfect 10 has not established that
the requested injunction would forestall that fate. To begin
with, Perfect 10 has not alleged that it was ever in sound
financial shape. Indeed, Dr. Zada acknowledges that the com-
pany “los[t] money at the beginning” and has never made up
that ground during its 15 years of operation. Dr. Zada also
acknowledges that search engines other than Google contrib-
ute to making Perfect 10 images freely available. In one of his
declarations, he states that, in addition to spending “at least
2,000 hours using Google’s search engine to locate infringe-
ments of Perfect 10’s copyrighted works,” he has also “spent
thousands of hours viewing [infringing] websites and search
results of other search engines, including Yahoo! and MSN.”
Moreover, notwithstanding Perfect 10’s theory of irreparable
harm, it failed to submit a statement from even a single for-
mer subscriber who ceased paying for Perfect 10’s service
because of the content freely available via Google. Nor has
Perfect 10 provided any evidence in support of its claim that
10130 PERFECT 10 v. GOOGLE
Google’s alleged violation of the rights of publicity assigned
to Perfect 10 by its models would cause it irreparable harm.
[7] In sum, Perfect 10 has not shown a sufficient causal
connection between irreparable harm to Perfect 10’s business
and Google’s operation of its search engine. Because Perfect
10 has failed to satisfy this necessary requirement for obtain-
ing preliminary injunctive relief, the district court’s ruling
was not an abuse of discretion. See Winter, 129 S. Ct. at 374.3
AFFIRMED.
3
As part of its interlocutory appeal of the district court’s denial of its
motion for a preliminary injunction, Perfect 10 also sought review of the
district court’s grant of partial summary judgment in favor of Google
based on its ruling that Google is entitled to the safe harbor protection of
the DMCA for its caching feature, Blogger service, and (in part) its web
and image search. While partial summary judgment decisions are not nor-
mally appealable, Perfect 10 argues that we may consider this interlocu-
tory because it is “inextricably intertwined” with the denial of merits of
the preliminary injunction decision, and review of the partial summary
judgment ruling is “necessary to ensure meaningful review” of that deci-
sion. See Meredith v. Oregon, 321 F.3d 807, 812-13 (9th Cir. 2003) (quot-
ing Swint v. Chambers Cnty. Comm’n, 514 U.S. 35, 51 (1995)). Because
Perfect 10 has failed to show irreparable harm, we need not address its
likelihood of success on the merits, and therefore also need not address the
relationship between the preliminary injunction and summary judgment
orders.